Ex Parte Morinville

Patent Trial and Appeal Board

Nov 26, 2014

11003557 (P.T.A.B. Nov. 26, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/003,557 12/03/2004 Paul Morinville IBIG1120-1 1920
42671 7590 11/26/2014
LAW OFFICES OF MARK L. BERRIER
1715 S. Capital of Texas Hwy. Suite 200-E
Suite 200-E
AUSTIN, TX 78746
EXAMINER
NGUYEN, TAN D
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
11/26/2014 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 PAUL MORINVILLE
____________

Appeal 2012-003475
Application 11/003,5571
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final rejection of claims 1–18. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We REVERSE.2

1 The real party in interest, as identified by Appellant, is Paul V. Morinville
(App. Br. 4).

2 Our decision references Appellant’s Appeal Brief (“Br.,” filed July 5,
2011), and the Examiner’s Answer (“Ans.,” mailed October 6, 2011).
Appeal 2012-003475
Application 11/003,557

2
THE INVENTION
The claimed invention relates to systems and methods for managing
complex matrixed organizations (Spec. para. 1). Claim 1, reproduced below,
is representative of the subject matter on appeal.
1. A method implemented in a computer for dynamically
generating a hierarchical functional structure from a
hierarchical operational structure, comprising the steps:

providing a hierarchical operational structure of unique
positions within an organization;

associating one of a plurality of roles with each of the
positions, wherein each of the roles has a corresponding
major function, and wherein at least a subset of the
roles is non-unique;

identifying a first one of the positions;

identifying positions in the hierarchical operational
structure that are subordinate to the first one of the
positions and that have roles which have at least one
functional level in common with the role of the first one
of the positions; and

generating a hierarchical functional structure of the
identified positions;

wherein each of the steps is automatically implemented
in the computer.

Appeal 2012-003475
Application 11/003,557

3
THE REJECTIONS
The following rejections are before us for review:3
1. Claims 1–18 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Hensel (US 2004/0181442 A1, pub. Sept. 16, 2004) in view of Malone
(“Modeling the Performance of Organizational Structures,” pub. May-Jun.
1988) and Homsi (US 7,373,310 B1, iss. May 13, 2008).
2. Claims 1–18 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Hensel in view of Hax (“Organizational Design: A Survey and an
Approach,” pub. May-Jun. 1981) and Homsi.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.4
ANALYSIS
We have reviewed Appellant’s arguments in the Brief (Br. 12–47), the
Examiner’s rejection and the Examiner’s response (Ans. 6–26) to the
Appellant’s arguments. We concur with Appellant’s conclusion that the
Examiner has not shown that the combination proffered in the rejections of
record teach the subject matter recited in independent claims 1, 12, and 13.

3 Upon return of the application to the Examiner, the Examiner may wish to
review the claims for compliance under 35 U.S.C. §101 in light of the
recently issued preliminary examination instructions on patent eligible
subject matter. See “Preliminary Examination Instructions in view of the
Supreme Court Decision in Alice Corporation Ply. Ltd. v. CLS Bank
International, et al.,” Memorandum to the Examining Corps, June 25, 2014.
4 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2012-003475
Application 11/003,557

4
Specifically, the Examiner has not shown that the combination teaches
“identifying a first one of the positions; identifying positions in the
hierarchical operational structure that are subordinate to the first one of the
positions and that have roles which have at least one functional level in
common with the role of the first one of the positions; and generating a
hierarchical functional structure of the identified positions,” as required by
independent claims 1, 12 and 13. For instance, the Examiner does not cite to
any portion of Hensel for teaching “identifying positions in the hierarchical
operational structure that have role and function” (See Ans. 15), and the final
limitation of generating a hierarchical functional structure is based on those
identified positions. The Examiner responds to Appellant’s arguments
asserting that
“. . . . the bottom line is generating a hierarchical role/functional
structure of the identified positions, so the difference in the
starting/initial position may not make any difference as long as the
function chart for a company is generated. . . . The language of
“identified positions” in step (e) is broad, and there are many
“identified positions” and therefore, it’s not limited to a specific
position . . . .” (Ans. 23).

In other words, we agree with Appellant that the Examiner has not shown
that the prior art teaches “generating a second, functional hierarchical
structure using specific (subordinate common-role) positions identified from
a first, operational hierarchical structure” (App. Br. 14).
Accordingly, we will not sustain the Examiner’s rejectionsof
independent claims 1, 12, and 13 and the rejections of the dependent claims.5

5 Because the secondary rejection of Claims 1–18 also relies on Hensel for
teaching the contested limitations, we will not sustain that rejection either
for the reasons set forth above.
Appeal 2012-003475
Application 11/003,557

5
DECISION
For the foregoing reasons, we REVERSE the decision of the
Examiner to reject claims 1–18.

REVERSED

rvb