Ubaldo Bilello et al.

Patent Trials and Appeals Board

Oct 29, 2020

2019006303 (P.T.A.B. Oct. 29, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/407,627 02/28/2012 Ubaldo G. Bilello AUS920120020US1 4322
82531 7590 10/29/2020
Lieberman & Brandsdorfer, LLC
IBM - Austin
802 Still Creek Lane
Gaithersburg, MD 20878
EXAMINER
AUSTIN, JAMIE H
ART UNIT PAPER NUMBER
3683
MAIL DATE DELIVERY MODE
10/29/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte UBALDO G. BILELLO, HANS-JUERGEN EICKELMANN,
RICARDO L. FABRIZE, LOUIS R. FERRETTI JR., UDO KLEEMANN,
JEFFREY W. MILES, MICHAEL S. O’LEARY,
SHARMILA S. TILWALLI, and KAREN N. TOGER

Appeal 2019-006303
Application 13/407,627
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–24. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
International Business Machines Corporation. Appeal Br. 3.
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BACKGROUND
The Specification states that the “invention relates to risk assessment
and management of aspects of a supply chain” including “identification and
management of risks in the supply chain, and deployment of risk
mitigation.” Spec. ¶ 1.
CLAIMS
Claims 1, 9, and 17 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A method comprising:
generating, with a processor, one or more risk categories
associated with one or more brand commodity supply chains for
delivering a commodity into a brand, each brand commodity
supply chain comprising an intermediate component supply
chain and a final assembly supply chain, wherein generation
comprises identifying the risk categories for both the
intermediate component supply chain and the final assembly
supply chain;
comparing disparate pieces of infom1ation associated
with the generated risk categories;
creating a single holistic image utilizing the disparate
pieces of information including forming a visible relationship
among disparate pieces of infom1ation and organizing the
disparate pieces of information within the single holistic image;
identifying, with the processor, at least a first supply
chain of the one or more brand commodity supply chains for a
risk assessment within the single holistic image;
evaluating one or more risk categories of at least a first
aspect of the first supply chain within the single holistic image,
including performing an impact evaluation of each risk category
of the at least first aspect of the first supply chain, the impact
evaluation includes to transform the single holistic image into a
likelihood of disruption of the on-time delivery of the
commodity including determining a likelihood of impact and a
meantime-to-repair;
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performing an aggregation of risk elements associated
with the one or more brand commodity supply chains, including
aggregating each impact evaluation of the first supply chain,
wherein the performed aggregation includes transforming each
individual likelihood of disruption for each risk category into a
single likelihood of disruption of the on-time delivery of the
commodity based on all of the risk elements;
maintaining on-time delivery of the commodity utilizing
management of key risks in response to the evaluation and
aggregation, including performing a risk mitigation plan to
mitigate a risk identified to affect sustainability of the first
supply chain; and
a product of manufacture produced through performance
of the risk mitigation plan.
REJECTIONS
1. The Examiner rejects claims 1–24 under 35 U.S.C. § 112, second
paragraph, as indefinite.
2. The Examiner rejects claims 1–24 under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.
3. The Examiner rejects claims 1–24 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
DISCUSSION
Indefiniteness
The Examiner determines that the limitation “a product of
manufacture produced through performance of the risk mitigation plan” in
each of the independent claims “renders the claim indefinite because it is
unclear what specifically the ‘a product of manufacture’ is.” Final Act. 17.
The Examiner explains that this limitation is indefinite in the context of the
category of invention being claimed in each of the independent claims. Id.
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at 17–19. With respect to claim 1, the Examiner determines that the claim is
a method claim and the last limitation of “a product of manufacture . . .”
appears to be directed to a different statutory class of inventions, i.e., a
product. Id. at 17–18. With respect to claim 9, the Examiner finds that the
claim recites a system “comprising a functional unit in communication with
the memory, the functional unit comprising tools to support risk assessment,
the tools comprising ‘a product of manufacture.’” Id. at 18. The Examiner
determines that the product of manufacture would not be a tool as recited in
claim 9. Id. Finally, with respect to claim 17, the Examiner determines that
the claim recites a computer program product and it is not clear how
execution of a program causes the computer to create or perform “a product
of manufacture.” Id. The Examiner notes that “[t]here appears to be
language missing in this amended limitation to the claim. A product of
manufacture would not be produced through performance of the risk
mitigation plan as claimed.” Id. at 18–19.
In response, Appellant asserts only that a proposed amendment was
filed that overcomes these rejections “and more clearly recites Appellant’s
limitations for each of the three differing statutory categories,” but that
amendment was not entered. Appeal Br. 26. We find that the limitation “a
product of manufacture produced through performance of the risk mitigation
plan” creates ambiguity in each of the independent claims for the reasons
provided by the Examiner. See Final Act. 17–19. Accordingly, we sustain
this rejection.
Remaining Rejections
In view of our determination that claims 1–24 are indefinite, and
because we find that an analysis of the remaining rejections would
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necessarily be based on a speculative assumption as to the meaning of the
claims, we do not sustain the rejections under 35 U.S.C. § 112, first
paragraph and § 101. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962).
However, it should be understood that our decision in this regard is pro
forma and based solely on the indefiniteness of the claimed subject matter,
and does not reflect in any way on the adequacy of the Examiner’s analysis
in rejecting the claims.
CONCLUSION
We AFFIRM the rejection of claims 1–24 under 35 U.S.C. § 112,
second paragraph. We pro forma REVERSE the rejections of claims 1–24
under 35 U.S.C. §§ 101, 112, first paragraph.
In summary:
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
1–24 101 Eligibility 1–24
1–24 112, first
paragraph
Written
Description
1–24
1–24 112, second
paragraph
Indefiniteness 1–24
Overall
Outcome
1–24
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136 (a)(l)(iv).
AFFIRMED