Ex Parte Morinville

Patent Trial and Appeal Board

Feb 22, 2018

11003557 (P.T.A.B. Feb. 22, 2018)

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.
11/003,557 12/03/2004 Paul Morinville IBIG1120-1 1920
42671 7590 02/23/2018
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
02/23/2018 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 2016-0081021
Application 11/003,5572
Technology Center 3600
____________

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

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

Paul Morinville (Appellant) appeals under 35 U.S.C. § 134(a) from
the decision rejecting claims 1–16, 18, and 19 under 35 U.S.C. §101.3 App.
Br. 11. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Our Decision references Appellant’s Appeal Brief (“App. Br.,” filed May
3, 2016), Reply Brief (“Reply Br.,” filed Aug. 23, 2016), the Examiner’s
Answer (“Ans.,” mailed June 24, 2016), and the Final Office Action (“Final
Act.,” mailed Aug. 17, 2015).
2 The real party in interest, as identified by Appellant, is “Paul V.
Morinville” (App. Br. 4). Claim 17 is canceled (id. at 28 (Claims App’x)).
3 The rejection under 35 U.S.C. § 112 is withdrawn (Ans. 2).
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THE INVENTION
“The invention relates generally to systems and methods for managing
complex matrixed organizations.” Spec. ¶ 1. Method claim 1, computer
readable storage medium claim 12, and apparatus claim 13 are the
independent claims on appeal and recite substantially similar subject matter.
Claim 1, reproduced below with added formatting and bracketed notations,
is illustrative 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:

[(a)] providing a hierarchical operational structure of unique
positions within an organization;

[(b)] 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;

[(c)] identifying a first one of the positions;

[(d)] 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

[(e)] generating a hierarchical functional structure of the
identified positions; and

[(f)] controlling user access to business processes based on the
hierarchical functional structure;

[(g)] wherein each of the steps is automatically implemented in
the computer.
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ANALYSIS
Claims 1–16, 18, and 19 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 5.
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and
citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Incorporated, 566 U.S. 66, 82–84 (2012), “for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice,
134 S. Ct. at 2355. The first step in that analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts.”
Id. If the claims are not directed to a patent-ineligible concept, e.g., to an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “individually
and ‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 566 U.S. 66, 79, 78).
Applying the framework in Alice, and as the first step of that analysis,
the Examiner maintains that step (a)–(e) of claim 1 are directed to generating
a hierarchical functional structure from a hierarchical operational structure,
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which is a method of organizing human activity and an idea of itself. Ans.
6. According to the Examiner, providing a hierarchical structure with roles
and positions of an organization is an abstract idea of organizing human
activity, by identifying unique positions and roles of humans in an
organization. Id. at 6–7. As for step (f), “controlling user access to business
processes based on the hierarchical functional structure,” the Examiner
considers this step as either insignificant post-solution activity or an abstract
idea, as per SmartGene.4 Id. at 8. Proceeding to the second step under the
Alice framework, the Examiner finds the claim does not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the additional computer elements, which are recited at a
high level of generality, provide conventional computer functions that do not
add meaningful limits to practicing the abstract idea. Id. at 8–9 (citing Spec.
¶¶ 80–81, Figs 1, 2).
Responding to the Examiner’s rejection, Appellant argues claims 1–
16, 18, and 19 as a group. App. Br. 16–21. We select independent claim 1
as representative. Thus, claims 2–16, 18, and 19 stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant’s Specification describes the invention as “systems and
methods for providing an operating organization, which is generally thought
of as a Profit and Loss organization or a business unit organization, and
many functional organizations, which are organizations of functions like
Finance, Human Resources, Legal, Customers, Vendors, etc., embedded into
different business units within the operating organization.” Spec. ¶ 1.

4 SmartGene, Inc. v Advanced Biological Labs., 555 Fed. Appx. 950 (Fed.
Cir. 2014).
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Representative claim 1 recites “[a] method implemented in a
computer for dynamically generating a hierarchical functional structure from
a hierarchical operational structure, comprising” six steps: (a) providing a
hierarchical operational structure of unique positions…; (b) associating one
of a plurality of roles with each of the positions…; (c) identifying a first one
of the positions; (d) 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; (e) generating a hierarchical functional structure of
the identified positions; and (f) controlling user access to business processes
based on the hierarchical functional structure. See Claim 1 supra.
“[T]he first step in the Alice inquiry . . . asks whether the focus of the
claims is on the specific asserted improvement in computer capabilities . . .
or, instead, on a process that qualifies as an ‘abstract idea’ for which
computers are invoked merely as a tool.” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335–36 (Fed. Cir. 2016).
The subject matter of claim 1, as reasonably broadly construed, is
drawn to a business administration concept for management of a business;
that is, claim 1 is focused on a methodology of creating a functional
organizational structure5 from a hierarchical operational structure and
controlling access to business processes6 based on the created functional
structure. We find the concept of organizational structure, in which an

5 “Functional Organizations are used to manage how people and assets
report to each other within a function.” Spec. ¶ 26.
6 “Companies must restrict access to certain users while allowing other users
to have access to certain business processes and certain information. For
example, the purchase of a computer is a business process.” Spec. ¶ 5.
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organization can be structured in different ways, and managing access to
business processes based on an organizational structure, is a well-established
business practice, and an idea with no particular concrete or tangible form.
Furthermore, we find the “computer” of claim 1 is invoked merely as a tool
and does not provide any specific improvement in computer capabilities. Cf.
In re TLI Communications LLC Patent Litigation, 823 F.3d 607, 613 (Fed.
Cir. 2016) (The claims’ focus “was not on an improved telephone unit or an
improved server.”). Because we find that claim 1, as reasonably broadly
construed, is directed to a business administration concept for management
of a business, i.e., a conventional business practice long prevalent in our
system of commerce, and that the recited “computer” is invoked merely as a
tool, we determine that this is nothing more than the automation of the
abstract idea.7
We are not persuaded of error by Appellant’s contention that the
claims are not directed to an abstract idea because “the limitation of
controlling user access to business processes does not simply amount to
abstract manipulation or communication of information, but instead amounts
to a real-life constraint on a real user’s ability to perform certain actions.”
App. Br. 17; see also Reply Br. 4–5. Indeed, our reviewing court has held
certain fundamental economic and conventional business practices to
be abstract ideas. See, e.g., Accenture Global Services, GmbH v. Guidewire

7 See, e.g., Spec. ¶ 44 (“Current systems cannot automatically make this
determination without also including organizational information and other
information.”); Spec. ¶ 48 (“Broadly speaking, the invention comprises
systems and methods for automating and increasing the efficiency of a
Matrixed Organization by managing a static or tabled operating organization
and creating dynamic functional organizations based on the operating
organization’s structure.”).
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Software, 728 F.3d 1336, 1344 (Fed. Cir. 2013) (generating task based rules
based on an event); Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring information
presented to a user based on specific conditions); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (Methods of offer-
based price optimization in an e-commerce environment); Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1333 (Fed. Cir. 2015), cert.
denied, 136 S. Ct. 2510, 195 L. Ed. 2d 841 (2016) (using organizational and
product group hierarchies to determine a price); Prism Techs. LLC v. T-
Mobile USA, Inc., No. 2016-2031, 2017 WL 2705338, at *1-2 (Fed. Cir.
June 23, 2017) (non-precedential) (providing restricted access to resources.).
As discussed above, the claims of the present application are directed to a
business practice, which is similarly abstract.
Turning to the second step outlined in Alice, we agree with the
Examiner that there is no inventive concept defined by an element or
combination of elements in claim 1, which is significantly more than the
abstract idea. The method as claimed is an application of well-known
business management concept in a known computing environment. With
regard to implementing said method on a computer, as claimed, “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Alice, 134 S. Ct. at 2358. Appellant
does not persuasively explain why the claimed invention is dissimilar to the
claims in SmartGene. The claims in SmartGene involved gathering
information and applying “expert rules” to generate “advisory information.”
SmartGene, 555 F. App’x at 952. Our reviewing court found the claims
patent-ineligible because they did “no more than call on a ‘computing
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device,’ with basic functionality for comparing stored and input data and
rules, to do what doctors do routinely.” Id. at 954. In view of the
Specification, Appellant’s arguments do not apprise us of error in the
rejection because Appellant has not shown how the claimed process amounts
to more than comparing stored and input data and applying business rules.8
See, e.g., Spec. ¶ 4 (“Business Rules may be applied to control how the
change of information is accomplished. Business rules generally manage
how a given business process is accessed, who collaborates to perform the
change, and who approves it and in what order it is approved.”); Spec. ¶ 5
(“Business Rules may restrict access to certain users and thereby limit the
type of employees who are authorized to purchase a particular computer.”);
Spec. ¶ 53 (“both or either of operating organization or the functional
organizational structures are leveraged to cascade access, collaboration and
approval rules down thru the organization thru organizational inheritance
properties.”); Spec. ¶ 63 (“In a preferred embodiment, the position of Org 0
in the organizational structure is defined in the system by the following
rules…”); Spec. ¶ 78 (“Business rules may be set to drive from the
functional organization or from the operating organization.”).

8 See also, Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1345 (Fed. Cir. 2013) (claims reciting “generalized software
components arranged to implement an abstract concept [of generating
insurance-policy-related tasks based on rules to be completed upon the
occurrence of an event] on a computer” not patent eligible); and
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (“[s]imply
adding a ‘computer aided’ limitation to a claim covering an abstract concept,
without more, is insufficient to render [a] claim patent eligible” (internal
citation omitted)).
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We also find unpersuasive Appellant’s argument that controlling the
users’ access to the business processes amounts to significantly more than
the abstract idea because “[t]he claims do not attempt to preempt every
application of this idea and consequently do not risk disproportionately tying
up the use of the idea.” App. Br. 19. Indeed, the Supreme Court has
explained that “the prohibition against patenting abstract ideas cannot be
circumvented by attempting to limit the use of [the idea] to a particular
technological environment.” Alice, 134 S. Ct. at 2358. Although the
Supreme Court has described “the concern that drives this exclusionary
principle [i.e., the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption” (id. at 2354), characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. “The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability” and “[f]or this reason, questions on preemption
are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S.
Ct. at 2354). Yet although “preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Id.; see also OIP Techs., 788 F.3d at 1362–63 (“[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”).
Finally, Appellant argues the Examiner’s assertion that the claims lack
an inventive concept is “contradicted by the Examiner’s withdrawal of the
previous rejections under 35 U.S.C. § 102.” App. Br. 20. Appellant’s
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argument does not persuade us of Examiner error. Although the second step
in the Alice analysis includes a search for an inventive concept, the analysis
is not an evaluation of novelty or nonobviousness, but rather, a search for
“an element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S.
Ct. at 1294). A novel and nonobvious claim directed to a purely abstract
idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
Further, “under the Mayo/Alice framework, a claim directed to a newly
discovered law of nature (or natural phenomenon or abstract idea) cannot
rely on the novelty of that discovery for the inventive concept necessary for
patent eligibility.” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369,
1376 (Fed. Cir. 2016).
Accordingly, we sustain the rejection of independent claim 1 as being
directed to patent ineligible subject matter, including claims 2–16, 18, and
19 which fall with claim 1.

DECISION
For the foregoing reasons, we affirm the decision of the Examiner to
reject claims 1–16, 18, and 19 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED