Ex Parte Ng et al

Patent Trial and Appeal Board

Nov 8, 2018

14146038 (P.T.A.B. Nov. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/146,038 01/02/2014
128836 7590 11/13/2018
WOMBLE BOND DICKINSON (US) LLP
Attn: IP Docketing
P.O. Box 7037
Atlanta, GA 30357-0037
FIRST NAMED INVENTOR
Thomas Y.Ng
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5013899.104US1 5117
EXAMINER
ULLAH,ARIF
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
11/13/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentadmin@Boeing.com
ipdocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS Y. NG, SOOK K. KIM, DIRK B. SHAFFRON,
ZA YNAL A. PHAM, DENNIS C. JOHNSON,
JEFFREY W. CANADY, and JENNIFER J. PAINTER
Appeal2017-007331
Application 14/146,03 8
Technology Center 3600
Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JUSTIN BUSCH, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1-21, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as The Boeing Company.
App. Br. 1.
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STATEMENT OF THE CASE
Appellants' invention assesses a supplier's technical risks to a
product's design, development, and manufacturing. Spec. ,r 1. A product
storage stores characteristic elements applicable to the product, and a
technical-profile storage stores technical-profile elements applicable to the
supplier. Id. ,r 8. A technical risk assessment of the supplier for the product
is generated that includes risk factors relating to one or more of the
characteristic elements and technical-profile elements. Id. ,r 9.
Claim 1 is illustrative:
1. An apparatus comprising a processor and a
memory storing executable instructions that, in response to
execution by the processor, cause the apparatus to at least:
receive input identifying a particular product and a
particular manufacturing supplier for a design, development or
manufacturing program;
identify respective characteristic elements for the
particular product from a product storage configured to store
characteristic elements applicable to one or more products
including the particular product, at least some of the
characteristic elements relating to technological maturity,
complexity, criticality to the program or its on-time delivery, or
availability of one or more alternative products;
identify respective technical-profile elements for the
particular manufacturing supplier from a technical-profile
storage configured to store technical-profile elements applicable
to one or more manufacturing suppliers including the particular
manufacturing supplier, at least some of the technical-profile
elements relating to technical performance, infrastructure,
organizational structure, sub-tier management, domicile,
cooperation, communication, risk management, ability to work
with an integrated schedule, or control of a key technology;
receive assignment of quantitative risk ratings to the
respective characteristic elements and the respective technical-
profile elements based on applicability of the respective
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characteristic elements to the particular product and the
particular manufacturing supplier; and
generate a technical risk assessment of the particular
manufacturing supplier for the particular product, the technical
risk assessment including a plurality of risk factors each of
which is related to one or more characteristic elements and
technical-profile elements,
wherein the apparatus being caused to generate the
technical risk assessment includes being caused to receive
assignment of quantitative parameters and calculate risk scores
for respective risk factors, and wherein for each risk factor, the
quantitative parameters include a likelihood and a consequence,
and the risk score is calculated as a function of the quantitative
parameters for the risk factor, and the quantitative risk ratings
assigned to the one or more characteristic elements and
technical-profile elements related to the risk factor.
THE REJECTIONS
The Examiner rejected claims 1-21 under 35 U.S.C. § 101 as directed
to ineligible subject matter. Final Act. 10-18.2
The Examiner rejected claims 1-3, 6, 8-10, 13, 15-17, and 20 under
35 U.S.C. § 103 as being unpatentable over Stenger (US 2008/0140514 Al;
June 12, 2008) and Thuve et al. (US 2007 /0203912 Al; Aug. 30, 2007).
Final Act. 18-31. 3
2 Throughout this opinion, we refer to (1) the Final Rejection mailed Aug. 9,
2016 ("Final Act."); (2) the Appeal Brief filed Nov. 14, 2016 ("App. Br.");
(3) the Examiner's Answer mailed Mar. 9, 2017 ("Ans."); and (4) the Reply
Brief filed Apr. 12, 2017.
3 In the header for this rejection, the Examiner mistakenly refers to the
rejection as being anticipated by Stenger and Thuve. Final Act. 18. Such
language, however, is indicative of an anticipation rejection under 35 U.S.C.
§ 102. See MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) (9th ed.
Rev. 08.2017, Jan. 2018) § 706.02(V) (noting that "[t]he distinction between
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The Examiner rejected claims 4, 5, 11, 12, 18, and 19 under 35 U.S.C.
§ 103 4 as being unpatentable over Stenger, Thuve, and Jeffries (US
2004/0078098 Al; Apr. 22, 2004). Final Act. 31-35.
The Examiner rejected claims 7, 14, and 21 under 35 U.S.C. § 103 as
being unpatentable over Stenger, Thuve, and Angell et al. (US
2008/0249793 Al; Oct. 9, 2008). Final Act. 35-37.
THE INELIGIBILITY REJECTION
The Examiner finds the claims are directed to an abstract idea, namely
collecting data and assessing risk. Final Act. 3. According to the Examiner,
although the recited limitations are analogous to the claims our reviewing
court found abstract in Digitech Image Technologies, LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) (Final Act. 2-3), the abstract
idea found in Digitech is merely one such example. Ans. 4. The Examiner
adds that the claimed elements do not add significantly more to the abstract
idea to render the claimed invention patent-eligible because, among other
rejections based on 35 U.S.C. 102 and those based on 35 U.S.C. 103 should
be kept in mind. Under the former, the claim is anticipated by the
reference," emphasis added). Despite this inconsistency, we nonetheless
presume that the Examiner intended to reject claims 1-3, 6, 8-10, 13, 15-17,
and 20 as obvious over Stenger and Thuve, particularly in view of the
Examiner (1) citing§ 103 in the rejection's header, and (2) acknowledging
that Stenger lacks certain recited limitations. See Final Act. 18, 26.
Accordingly, we treat the Examiner's error in this regard as harmless.
4 Despite the Examiner acknowledging Appellants' application is examined
under the first inventor to file provisions of the Leahy-Smith America
Invents Act (AIA) (Final Act. 2), the Examiner mistakenly refers to the
§ 103 rejection as being under§ I03(a) in the header for this rejection (id. at
18). We, therefore, present the correct statutory basis here for clarity, and
treat the Examiner's error in this regard as harmless
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things, the recited steps (1) do not improve another technology or technical
field, (2) do not improve computer functionality, and (3) recite that which is
well-understood, routine, and conventional in the field. Final Act. 14.
Based on these findings, the Examiner concludes that the claims are
ineligible under § 101. See id. at 10-15.
Appellants argue, among other things, that the claims are neither
analogous to those of Digitech nor capable of mental performance. App. Br.
8; Reply Br. 3--4. Appellants add that, even if the claimed invention was
directed to an abstract idea, the claims recite additional elements that add
significantly more to the abstract idea by, among other things, improving
computer-aided quantitative risk assessment-a technology or technical
field. App. Br. 9; Reply Br. 4.
ISSUE
Has the Examiner erred in rejecting claims 1-21 by concluding that
they are directed to ineligible subject matter under § 101? This issue turns
on whether the claimed invention is directed to a patent-ineligible abstract
idea and, if so, whether the claim's elements----considered individually and
as an ordered combination-transform the nature of the claim into a patent-
eligible application of that abstract idea.
ANALYSIS
To determine whether claims are patent eligible under§ 101, we apply
the Supreme Court's two-step test articulated in Alice Corp. Proprietary Ltd.
v. CLS Bank International, 134 S. Ct. 2347 (2014). First, we determine
whether the claims are directed to a patent-ineligible concept: laws of nature,
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natural phenomena, and abstract ideas. Id. at 2354--55. If so, we then
proceed to the second step and examine the claim's elements-both
individually and as an ordered combination-to determine whether the claim
contains an "inventive concept" sufficient to transform the claimed abstract
idea into a patent-eligible application. Id. at 2357.
Alice Step One
Appellants argue the claims as a group. See App. Br. 7-9. We select
independent claim 1 as representative of this group, and remaining claims 2-
21 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Applying Alice step one, we agree with the Examiner that the claimed
invention is directed to collecting data and assessing risk. Final Act. 10;
Ans. 4. Independent claim 1 recites four key apparatus functions----(A)
identifying characteristic elements for a product and technical-profile
elements for a manufacturing supplier, (B) receiving assignments of
quantitative risk ratings to the characteristic elements and technical-profile
elements, (C) receiving assignment of quantitative parameters and
calculating a risk score as a function of the quantitative parameters, and (D)
generating a technical risk assessment of the manufacturing supplier that
includes the risk factor. At a high level of abstraction, claim 1 as a whole is
directed to collecting data and assessing risk, albeit recited more narrowly
with respect to generating a supplier's technical risk assessment based on
identified elements of a product and the supplier. See Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) (noting that an
abstract idea can generally be described at different levels of abstraction).
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Notably, similar concepts were found abstract by the Federal Circuit.
See Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016); see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334--
35 (Fed. Cir. 2016). In that regard, assessing risk of collected data, or risk
management, "is an economic practice long prevalent in our system of
commerce and squarely within the realm of abstract ideas." See Int 'l Sec.
Exch., LLC v. Chi. Bd. Options Exch., Inc., CBM2013-00050, 2015 WL
930204, at *6 (PTAB Mar. 2, 2015), aff'd, 640 F. App'x 986 (Mem) (Fed.
Cir. 2016); see also Bilski v. Kappas, 561 U.S. 593, 594 (2010) (noting that
risk hedging is a fundamental economic practice long prevalent in our
system of commerce); Alice, 134 S. Ct. at 2356 (same for intermediated
settlement, or using a third party to mitigate settlement risk); In re Chorna,
656 Fed. App'x. 1016 (Fed. Cir. 2016) (unpublished) (describing financial
instruments designed to protect against the risk of investing in financial
instruments the very same economic practices deemed patent-ineligible in
Bilski and Alice); Clarilogic, Inc. v. FormFree Holdings Corp., 681 F.
App'x 950 (2017) (unpublished) (holding ineligible claims reciting
computer-implemented method for providing data indicating financial risk
about an individual).
Furthermore, it is well settled that collecting information is within the
realm of abstract ideas----even when the information is limited to particular
content. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016). It is also well settled that analyzing information by steps people
go through in their minds, or by mathematical algorithms, without more, are
essentially mental processes within the abstract idea category. Id. at 1354.
And merely presenting the results of abstract processes of collecting and
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analyzing information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.
Id.
Similar to the claims at issue in Electric Power, the claimed invention
here (1) gathers information ( a product, a manufacturing supplier,
characteristic elements, technical-profile elements, assignments of
quantitative risk ratings, and assignment of quantitative parameters in the
above-noted functions (A), (B), and (C)); (2) analyzes it ( calculating a risk
score in function (C)); and (3) displays the results of the gathering and
analysis (a technical risk assessment in function (D)) of a specified content,
but does not use any particular inventive technology for performing those
functions. That the information pertains to technical risk assessment of a
supplier is of no consequence here, for collecting and analyzing such
information does not make the collection and analysis non-abstract. See
SAP Am., Inc. v. Investpic, LLC, 890 F.3d 1016, 1021 (Fed. Cir. 2018),
modified on reh 'g (Fed. Cir. Aug. 2, 2018).
Although claim 1 recites an apparatus that performs the various
recited functions upon processor execution, a human can otherwise use pen
and paper to perform these functions-a fact that only further weighs against
eligibility. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1372-73 (Fed. Cir. 2011); see also Gottschalkv. Benson, 409 U.S. 63, 67
(1972). To the extent that Appellants contend that the recited functions
could not otherwise be performed manually (see App. Br. 8; Reply Br. 3--4),
there is no persuasive evidence on this record to substantiate such a
contention.
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Accordingly, we agree with the Examiner that claim 1 is directed to
an abstract idea.
Alice Step Two
Turning to Alice step two, the recited elements----considered
individually and as an ordered combination----do not transform the nature of
claim 1 into a patent-eligible application of the abstract idea to ensure that
the claim amounts to significantly more than that idea. See Alice, 134 S. Ct.
at 2357.
That the recited apparatus comprises a processor and a memory
storing executable instructions that, in response to execution by the
processor, causes the apparatus to at least perform functions (A}-(D) does
not change our conclusion, for these elements do not add significantly more
to the abstract idea. First, the claimed invention uses generic computing
components to perform the recited abstract idea, namely collecting data and
assessing risk. But merely reciting generic computing components cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
See Alice, 134 S. Ct. at 2358-59; see also Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016) (noting
that components such an "interface," "network," and "database" are generic
computer components that do not satisfy the inventive concept requirement);
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That
a computer receives and sends the information over a network-with no
further specification-is not even arguably inventive.").
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Appellants' reliance on Wikipedia in this regard (App. Br. 9) is
unavailing, for this non-peer-reviewed source has limited probative value. 5
Appellants' reliance on Diamond v. Diehr, 450 U.S. 175 (1981) and
argument that the claims improve an existing technological process is
likewise unavailing. App. Br. 9; Reply Br. 4. In Diehr, "[t]he claimed
invention [was] a process for molding raw, uncured synthetic rubber into
cured precision products." Diehr, 450 U.S. at 177. The claimed process in
Diehr "us[ ed] well-known time, temperature, and cure relationships to
calculate[,] by means of the Arrhenius equation[,] when to open the press
and remove the cured product." Id. at 177-78. The Court noted that the
"claims involve the transformation of an article, in this case raw, uncured
synthetic rubber, into a different state or thing." Id. at 184. Here, there are
no similar steps. Despite Appellants' arguments to the contrary (App. Br. 9;
Reply Br. 4 ), the recited quantitative risk assessment does not improve an
existing technological process, as in Diehr. See Alice, 134 S. Ct. at 2358.
Rather, the evidence on this record tends to suggest that the recited computer
components operate as conventionally expected, as discussed previously.
For the foregoing reasons, then, the recited elements----considered
both individually and as an ordered combination----do not contain an
5 See Bing Shun Liv. Holder, 400 Fed. App'x. 854, 857 (5th Cir. 2010)
(unpublished) (noting Wikipedia's unreliability and citing Badasa v.
Mukasey, 540 F.3d 909, 910-11 (8th Cir. 2008)); see also Ex parte Three-
Dimensional Media Group, Ltd., No. 2009-004087, 2010 WL 3017280, at
* 17 (BP AI 2010) (non-precedential) ("Wikipedia is generally not considered
to be as trustworthy as traditional sources for several reasons, for example,
because (1) it is not peer reviewed; (2) the authors are unknown; and (3)
apparently anyone can contribute to the source definition") (internal citation
omitted).
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"inventive concept" sufficient to transform the claimed abstract idea into a
patent-eligible application. Therefore, we are not persuaded that the
Examiner erred in rejecting claim 1, and claims 2-21 not argued separately
with particularity.
THE OBVIOUSNESS REJECTION OVER STENGER AND THUVE
The Examiner finds that Stenger discloses many recited elements of
independent claim 1 including, among other things, receiving input
identifying a product and a manufacturing supplier. Final Act. 19-20. The
Examiner also finds that Stenger discloses identifying respective technical-
profile elements for the manufacturing supplier from a technical-profile
storage, at least some of the technical-profile elements relating to technical
performance, infrastructure, organizational structure, sub-tier management,
domicile, cooperation, communication, risk management, ability to work
with an integrated schedule, or control of a key technology. Id. at 21-22.
The Examiner also finds that Stenger discloses identifying respective
characteristic elements for the product from a product storage. Id. at 20.
Although the Examiner acknowledges at least some of Stenger's
characteristic elements do not relate to technological maturity, complexity,
criticality to the program or its on-time delivery, or availability of one or
more alternative products (see id. at 20, 26), the Examiner cites Thuve for
teaching this feature in concluding that the claim would have been obvious.
Id. at 26-28.
Appellants argue Stenger does not identify a product and supplier, or
identify characteristic elements and technical-profile elements for the
product and supplier, respectively, from storage. App. Br. 10; Reply Br. 5.
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Appellants further argue Stenger does not disclose technical-profile elements
which relate to technical performance, infrastructure, organizational
structure, sub-tier management, domicile, cooperation, communication, risk
management, ability to work with an integrated schedule, or control of a key
technology. App. Br. 10-11; Reply Br. 5---6.
Appellants add that Stenger does not generate a technical risk
assessment of a particular manufacturing supplier for a particular product,
the technical risk assessment including a plurality of risk factors, each of
which is related to one or more characteristic elements and technical-profile
elements. App. Br. 11-12; Reply Br. 6-7. Lastly, Appellants contend one
skilled in the art would not have combined Thuve with Stenger because
Thuve focuses on issues different from those on which Stenger focuses.
App. Br. 11-12; Reply Br. 7.
ISSUES
I. Under§ 103, has the Examiner erred in rejecting claim 1 by finding
that Stenger and Thuve collectively would have taught or suggested (A)
receiving input identifying a product and a manufacturing supplier,
identifying characteristic elements for the product from a product storage,
and identifying technical-profile elements for the manufacturing supplier
from a technical-profile storage; (B) at least some of the characteristic
elements relating to technological maturity, complexity, criticality to the
program or its on-time delivery, or availability of one or more alternative
products; (C) at least some of the technical-profile elements relating to
technical performance, infrastructure, organizational structure, sub-tier
management, domicile, cooperation, communication, risk management,
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ability to work with an integrated schedule, or control of a key technology;
and (D) generating a technical risk assessment of the particular
manufacturing supplier for the particular product, the technical risk
assessment including a plurality of risk factors each of which is related to
one or more characteristic elements and technical-profile elements?
II. Is the Examiner's proposed combination supported by articulated
reasoning with some rational underpinning to justify the Examiner's
obviousness conclusion?
ANALYSIS
I-A
We see no error in the Examiner's reliance on Stenger for at least
suggesting identifying respective characteristic elements for a product from
a product storage. Final Act. 20 (citing Stenger ,r,r 6-7, 63---66, 145).
Stenger assesses a performance risk of a supplier entity that provides goods
to a manufacturing entity. Stenger ,r,r 13, 62---63. Stenger's servers populate
memory with structured data representing the supplier entity's quantifiable
information, including product quality data, product delivery data, parts
quality, and parts release data. Id. ,r,r 65-66. Stenger, then, at least suggests
identifying product quality data ( the claimed "characteristic elements for the
product") from a memory populated with the structured data ( the claimed
"product storage"), and receiving input that identifies the product.
Nor do we see error in the Examiner's finding that Stenger's system
identifies technical-profile elements for a manufacturing supplier from a
technical-profile storage. Final Act. 21-22 (citing Stenger ,r,r 5, 43, 62, 100,
112, 144 ). Stenger' s Figure 21 shows an environmental risk profile 290 of
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selected risk properties----capital intensity, resourcing difficulty, and raw
material risk. Stenger ,r,r 141, 14 3. Stenger, then, at least suggests
identifying the selected risk properties (the claimed "technical-profile
elements") for a supplier entity (the claimed "manufacturing supplier") from
a computer memory responsible for storing the selected risk properties (the
claimed "technical-profile storage").
Appellants' arguments that Stenger does not disclose receipt of input
identifying a product and supplier or identification of respective elements for
the product and supplier from storage because Stenger requires users to input
elements and conditions for assessment (App. Br. 1 O; Reply Br. 5) are
unavailing and not commensurate with the scope of the claim. Notably, the
claim does not require a receipt of input identifying a product and a
manufacturing supplier. Nor does the claim preclude users from inputting
elements, let alone inputting elements before the elements are identified
from storage. And even assuming the scope of the claim precludes users
from inputting elements-which it does not-we find Appellants'
contention that identifying elements from storage increases consistency and
reduces variability between users (App. Br. 1 O; Reply Br. 5) to be no more
thanconclusory attorney argument. See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997). As such, the Examiner's findings discussed above are
supported by a preponderance of the evidence. On this record, then, the
weight of the evidence favors the Examiner's position.
I-B
In the rejection, the Examiner cites Thuve for teaching that at least
some characteristic elements relate to (1) technological maturity, (2)
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complexity, (3) criticality to the program or its on-time delivery, or ( 4)
availability of one or more alternative products, as claimed. See Final Act.
26-28 (citing Thuve ,r,r 69, 95, 102)). Our emphasis underscores that not
only does the claim require only at least some characteristic elements be so
related, but they need only be related to one of the four enumerated elements
to satisfy the claim given their recitation in the alternative.
Turning to Thuve, the reference at least suggests that at least some
characteristic elements relate to "complexity": one of the four alternative
recited elements noted previously. Notably, Thuve identifies a project's
measurable characteristics as including the "simplicity of design" and
"simplicity of the technical data package." Thuve ,r 69. By measuring
simplicity, Thuve at least suggests measuring complexity.
I-C
We see no error in the Examiner's finding that Stenger' s risk
properties (the claimed "technical-profile elements") relate to technical
performance, infrastructure, organizational structure, sub-tier management,
domicile, cooperation, communication, risk management, ability to work
with an integrated schedule, or control of a key technology, as recited in
claim 1. Final Act. 21-22 (citing Stenger,r,r 5, 43, 62, 100, 112, 144). For
example, the term "risk management" is not defined in the Specification and,
therefore, is construed with its plain meaning, namely "[t]he activities
associated with risk management preparation, risk assessment, risk handling
option assessment, and risk control." See THE AUTHORITATIVE DICTIONARY
OF IEEE STANDARD TERMS 988 (7th ed. 2000). The term "risk assessment,"
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in tum, is defined as "[t]he process and procedures of identifying,
characterizing, quantifying, and evaluating risks and their significance." Id.
Given these definitions, we find Stenger' s risk properties at least
relate to risk management. Stenger' s Figure 21 illustrates risk levels for
each risk property over time. Stenger ,r 143. Stenger, then, at least suggests
the risk properties relate to a process of identifying and quantifying risks
(the claimed "risk management"). Appellants' arguments regarding
Stenger' s alleged shortcomings involving paragraph 21 's environmental risk
profiles as relating to environmental influences for an entity (App. Br. 11;
Reply Br. 5-6) do not squarely address-let alone persuasively rebut-the
Examiner's findings based on Stenger's risk properties. Therefore, the
Examiner's finding in this regard is supported by a preponderance of the
evidence. On this record, then, the weight of the evidence favors the
Examiner's position.
I-D
Nor do we see error in the Examiner's finding that Stenger discloses
generating a technical risk assessment of the particular manufacturing
supplier for the particular product, the technical risk assessment including a
plurality of risk factors each of which is related to one or more characteristic
elements and technical-profile elements, as recited in claim 1. Final Act.
23-26 (citing Stenger,r,r 13-21, 53, 66, 73, 86-87, 113, 137, 142). To be
sure, Stenger links a supplier entity's goods with risk properties of a generic
class of goods. Stenger ,r 142. Stenger aggregates the risk properties of the
supplier entity's goods to determine the risk property of the supplier entity.
Id. Contrary to Appellants' arguments (App. Br. 11-12; Reply Br. 6-7),
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Stenger, then, at least suggests generating the risk property of the supplier
entity based on the risk properties of the supplier entity's goods (the claimed
"technical risk assessment of the particular manufacturing supplier for the
particular product"), the risk property of the supplier entity including risk
factors each of which is related to the selected risk properties that include
capital intensity, resourcing difficulty, and raw material risk (the claimed
"technical-profile elements").
II
Moreover, we find unavailing Appellants' contention that one skilled
in the art would not look to combine Thuve with Stenger because Thuve' s
supplier technical oversight assessment is different from Stenger's business
performance risk evaluation. App. Br. 11-12; Reply Br. 7. "When a work is
available in one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different one." KSR
Int'! Co. v. Teleflex, Inc., 550 U.S. 398,417 (2007). Contrary to Appellants'
argument (Reply Br. 7), we see no reason why combining Stenger's quality
of parts with Thuve' s measurable design simplicity would not at least
contribute to improving decision making and accurately analyzing
information as the Examiner proposes (Final Act. 28; Ans. 12}-proposed
enhancements to the combination of Stenger and Thuve that predictably use
prior art elements according to their established functions to yield a
predictable result. See KSR, 550 U.S. at 417.
To be sure, the Examiner's finding that "Steger and Thuve are deemed
to be analogous references as they are reasonably pertinent to each other
and directed towards collecting and analyzing information to solve problems
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in similar fields" (Final Act. 27; Ans. 11) ( emphasis added) is inartful. The
analogous art test does not ask whether the prior art references are analogous
to each other, but rather asks whether the references are analogous to the
claimed subject matter-which they are. See In re Kahn, 441 F.3d 977,
986-87 (Fed. Cir. 2006) (defining the scope of analogous prior art as falling
under at least one of two separate tests: whether the reference's art is from
the same field of endeavor as the invention, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved).
Notably, the Specification discusses the problem to be solved by the
invention-improving existing techniques that lack technical risk
identification and mitigation. Spec. ,r 2. The claimed subject matter is
directed to assessing technical risks of suppliers. Id. ,r 1. Stenger is directed
to assessing a performance risk of a supplier entity. Stenger ,r,r 13, 62.
Based on this similarity, we find Stenger and the claimed subject matter are
within the same field of endeavor. See Kahn, 441 F .3d at 986-87.
Moreover, Thuve is directed to managing a supplier's producible
characteristics. Thube, Abstract. Thuve' s measurable characteristics of
production include specified materials and simplicity of design. Thuve ,r 69.
We find a reference that teaches measuring a supplier's producible
characteristics would have logically commended itself to a skilled person
faced with the problems in the field of technical risk identification and
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Appeal2017-007331
Application 14/146,038
mitigation. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011); see also
Kahn, 441 F .3d at 986-87.
Therefore, despite the Examiner's inartful characterization of the
analogous art test, we nonetheless deem the Examiner's error in this regard
as harmless. Accordingly, we find the Examiner's proposed combination is
supported by articulated reasoning with some rational underpinning to
justify the Examiner's obviousness conclusion.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2, 3, 6, 8-10, 13, 15-17, and 20 not argued separately
with particularity.
THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner's obviousness rejections of claims 4, 5,
7, 11, 12, 14, 18, 19, and 21. Final Act. 31-37. Although Appellants
nominally argue these claims separately, Appellants reiterate arguments
similar to those made in connection with claim 1, and contend that the
additionally cited references do not cure Stenger' s purported deficiencies.
See App. Br. 12-13; Reply Br. 8-9. We are not persuaded of error in these
rejections for the reasons previously discussed.
CONCLUSION
The Examiner did not err in rejecting claims 1-21 under 35 U.S.C.
§§ 101 and 103.
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Appeal2017-007331
Application 14/146,038
DECISION
The Examiner's decision to reject claims 1-21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F.R. § 1.13 6( a )(1 ). See 3 7 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
20