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게시일 2009년 4월17일
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Bilski 테스트를 교묘하게 비켜간 클레임 보정의 예

The Chicago Way

Better late than never, here are a few claims to consider from this week's issuances.  We'll stay close to home and give two from local companies. 

Key terms are in bold.




U.S. Patent No. 7,519,554 Processing binary options in future exchange clearing


Assignee: Chicago Mercantile Exchange Inc.

1. A method of processing binary options comprising: 

(a) defining an electronic book instrument for a corresponding binary option as a standard option on a non-tradeable cash-settled underlying futures contract; 

(b) assigning an expiration date for the electronic book instrument after the expiration of the binary option; 

(c) defining the non-tradeable underlying future maturity date after the expiration date for the binary option; 

(d) determining whether the binary option expired in the money; 

(e) for each expired binary option position, electronically transmitting a liquidating transfer transaction to an electronic futures contract clearing system

(f) for each expired binary option that cleared in the money, creating a transaction for the corresponding electronic book instrument, the electronic book instrument having a price being one currency unit less than the final value of an underlying statistical value for the expired binary options; and 

(g) after the expiration of the binary option, clearing the electronic book instrument on the electronic futures contract clearing system.


Commentary: Here is one of the better examples I've seen for how to pass the Bilski test.  This claim was originally rejected in fall 2008 under 101 for failing the machine or transformation test.  Without substantive amendment and just after the Bilski decision, the applicant successfully argued that the electronic futures contract clearing system was "clearly an apparatus or machine."  That sufficed: allowed and issued.  And probably no Festo problem (there was just an amendment to fix a typo.)
 
Note that the specification devotes a figure and several paragraphs describing this system in terms of both hardware and functionality. That's helpful.  In actuality, the figure is for an "exchange system", and it is not immediately apparent that this is is the same "clearing system" in the claim, but I'll let that slide.  In any event, it has become increasingly clear to me that perhaps the best approach to satisfying Bilski is to give a specific name to a system or server, use it in the claim, and define it with text and figures in the spec. And, while a "fanciful" name is nice for trademarks, better to use something descriptive here ("registration server", "cattle information server", etc.)


Here's a claim that's not as good on the 101 front, from a company with recently planted Chicago roots:




U.S. Patent No. 7,519,445 Method and apparatus for determining a solution group of parts in an assembly


Assignee: Boeing Company

1. A method for determining a solution group of relevant parts among a plurality of parts in an assembly; said solution group being related with at least one target part of said plurality of parts; each respective part of said plurality of parts being identified by a respective part-containing volume and a respective locus; each said respective locus being identified with respect to a common origin; the method comprising the steps of:   

(a) identifying said respective part-containing volume of each respective said at least one target part; 

(b) including each said respective part-containing volume of each respective said at least one target part as part of a target-containing volume for said at least one target part; 

(c) identifying each respective part-containing volume for each said relevant part; each said relevant part being identified by a respective part-containing volume having a predetermined relationship with respect to said target-containing volume; and 

(d) assigning said relevant part to said solution group.


Commentary: Set aside for a moment that, without reading the spec, you may have little idea of this claim's subject matter.  Just note that there no bold terms in there.  The examiner didn't raise 101 in the July 2008 office action and apparently didn't think to revisit the issue when allowing the claim in January 2009.  It's clear from the spec that this method is intended to be performed by a computer, but there's nothing at all in the claim to suggest it.  Even if there was, it's not clear such a computer would be particular.  Here is the associated figure of the patent "illustrating the apparatus of the present invention:"

Boeing

Particular enough for you?




Finally, let's take a look at one from a newcomer to the Bilski Watch:


U.S. Patent No. 7,519,180 Method and apparatus for copy protection


Assignee: Apple, Inc.

1. A method of copy protecting a content comprising:  

encoding a watermark in the content, wherein the watermark is not discernible by a recipient of the content, the watermark being indicative of a copy protection status of the content, wherein the watermark further indicates a level to which the content may be copied, and wherein the copy protection status of the content indicated by the watermark does not allow the recipient to record the content unless the recipient possesses a permission key that matches the watermark; 

transmitting the content with the encoded watermark to the recipient; and 

transmitting the permission key to the recipient, wherein the permission key is a variable permission key that varies over the transmission of the content and the encoded watermark such that more than one permission key is required to record the content and the encoded watermark, thereby allowing the recipient to record the content.



Commentary: So here's the question.  If this passes the "machine" prong, (as it almost certainly would, if better drafted -- the specification makes clear the method is performed by various encoders, extractors, demodulators and transmitters) where is that machine in the claim?  But I'd be more interested to hear if anyone could make an argument this passes the "transformation" prong.  Assuming "content" is a transformable article (which it may be under Abele), is it really transformed under Bilski if the transformation (adding a watermark) is "not discernible?"
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