NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: PAUL MORINVILLE,
Appellant
______________________
2018-1895
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 11/003,557.
______________________
Decided: April 29, 2019
______________________
PAUL MORINVILLE, Highland, IN, pro se.
THOMAS W. KRAUSE, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Andrei Iancu. Also represented by JOSEPH MATAL,
AMY J. NELSON, PHILIP J. WARRICK.
______________________
Before NEWMAN, PLAGER, and MOORE, Circuit Judges.
NEWMAN, Circuit Judge.
Paul Morinville appeals the decision of the Patent Trial
and Appeal Board (“PTAB” or “Board”), affirming the rejec-
tion of claims 1–16, 18, and 19 (all the remaining claims)
of Patent Application No. 11/003,557 (“’557 Application”)
2 IN RE: MORINVILLE
on the ground of unpatentability under 35 U.S.C. § 101. 1
On appellate review, we affirm the Board’s decision.
BACKGROUND
The ’557 Application, entitled “Matrixed Organization
Apparatus,” describes the invention as systems and meth-
ods for managing complex organizations. The Abstract of
the Invention states:
Systems and methods for dynamically and selec-
tively generating a hierarchical functional organi-
zation from a hierarchical operating organization
structure. In one embodiment, a hierarchical func-
tional structure is generated by first identifying
one of the positions in the operating organization
structure from which the functional organization
will be generated. After the starting position is
identified, the positions in the hierarchical opera-
tional 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 starting position are identified.
’557 Application, Abstract.
The ’557 Application states that its method provides,
inter alia, control of access to information when a company
reorganizes, merges, divests, adds departments, or other-
wise changes its operating structure—so that only author-
ized employees have access to designated business
information. The ’557 Application illustrates a hierar-
chical structure led by a Chief Executive Officer (“CEO”),
in Figure 1:
1 Ex Parte Paul Morinville, No. 2016-008102,
2018
WL 1029147 (P.T.A.B. Feb. 22, 2018) (“Bd. Op.”).
IN RE: MORINVILLE 3
In accordance with the ’557 Application, the system con-
verts the structure in Figure 1 to a hierarchical structure
in accordance with function, as shown in Figure 2.
Performance of the claimed method is outlined in claim
1, which was identified by the Board as representative:
1. A method implemented in a computer for dynam-
ically generating a hierarchical functional struc-
ture from a hierarchical operational structure,
comprising the steps:
4 IN RE: MORINVILLE
[(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 cor-
responding 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 oper-
ational 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 im-
plemented in the computer.
(bracketed letters added by the Board). The Board applied
the two-step analytical protocol established in Alice Corp.
Pty. Ltd. v. CLS Bank Int’l,
573 U.S. 208 (2014), and found
that claim 1 is directed to an abstract idea under 35 U.S.C.
§ 101, and is not saved by any inventive concept.
DISCUSSION
Standard of Review
On appellate review, the Board’s ruling on whether any
claim of an application “is drawn to patent-eligible subject
matter under § 101 is an issue of law that we review de
novo.” In re Ferguson,
558 F.3d 1359, 1363 (Fed. Cir. 2009).
And, the Board’s underlying factual findings are reviewed
for support from substantial evidence. Credit Acceptance
Corp. v. Westlake Servs.,
859 F.3d 1044, 1048 (Fed. Cir.
2017). Claims in pending applications receive their
IN RE: MORINVILLE 5
broadest reasonable interpretation during examination. In
re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed.
Cir. 2004).
Section 101
Section 101 defines patent-eligible subject matter, and
provides:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of
matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
35 U.S.C. § 101. Judicial precedent has established that
eligible subject matter excludes “laws of nature, natural
phenomena, and abstract ideas.”
Alice, 573 U.S. at 217.
Application of Section 101 to computer-implemented
methods has produced a body of precedent adapted to this
technology. The framework for determining whether a par-
ticular computer-implemented method is eligible for pa-
tenting was formulated in Alice as a two-step analysis,
whereby it is first determined whether the claimed subject
matter is directed to an abstract idea, and if so, it is deter-
mined whether the elements of the claim, considered “both
individually and as an ordered combination,” contain an
“inventive concept.”
Id. (internal quotations omitted). The
presence of an inventive concept will “‘transform the na-
ture of the claim’ into a patent-eligible invention.”
Id.
(quoting Mayo Collaborative Services v. Prometheus Labor-
atories, Inc.,
566 U.S. 66, 78–79 (2012)).
1. The Abstract Idea: Step One
The first step of the inquiry calls upon the decision-
maker to look at “whether the claims at issue are directed
to one of th[e] patent-ineligible concepts.”
Alice, 573 U.S.
at 217. Applying this inquiry to the Morinville claims, the
Board stated:
6 IN RE: MORINVILLE
The subject matter of claim 1, as reasonably
broadly construed, is drawn to a business admin-
istration concept for management of a business;
that is, claim 1 is focused on a methodology of cre-
ating a functional organizational structure from a
hierarchical operational structure and controlling
access to business processes based on the created
functional structure.
Bd. Op. at 5–6 (footnote omitted) (citing ’557 Application,
Spec. ¶¶ 26, 5).
The Board held that the subject matter is directed to
the abstract idea of reorganizing an existing organizational
structure to restrict/allow access to certain users, citing
precedent that fundamental economic and conventional
business practices are abstract ideas. Bd. Op. at 5–7 (citing
Accenture Global Servs., GmbH v. Guidewire 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) ( concerning methods
of offer-based price optimization in an e-commerce environ-
ment); Versata, Dev. Grp., Inc. v. SAP Am., Inc.,
793 F.3d
1306, 1333 (Fed. Cir. 2015) (using organizational and prod-
uct group hierarchies to determine a price); Prism Techs.
LLC v. T-Mobile USA, Inc., 696 F. App’x 1014, 1017 (Fed.
Cir. 2017), cert. denied,
138 S. Ct. 689 (2018) (providing re-
stricted access to resources)). The Board concluded:
We find the concept of organizational structure, in
which an organization can be structured in differ-
ent ways, and managing access to business pro-
cesses based on an organizational structure, is a
well-established business practice, and an idea
with no particular concrete or tangible form. Fur-
thermore, we find the “computer” of claim 1 is
IN RE: MORINVILLE 7
invoked merely as a tool and does not provide any
specific improvement in computer capabilities.
Bd. Op. at 5–6.
Mr. Morinville argues that his method is not an ab-
stract idea, for it “ensures that access rules between organ-
izations are matched automatically when any organization
changes its structure,” Appellant’s Br. 12 (emphasis
added), whereas in the prior art if an organization changes
its structure “the access rules associated with the [prior]
organization” structure must be manually changed to
match the new organization structure, Appellant’s Br. 11.
However, computer-based efficiency does not save an
otherwise abstract method. See Bancorp Servs., L.L.C. v.
Sun Life Assur. Co. of Canada (U.S.),
687 F.3d 1266, 1277-
78 (Fed. Cir. 2012) (performance by computer of operations
that previously were performed manually or mentally, al-
beit less efficiently, does not convert a known abstract idea
into eligible subject matter). In Versata, this court ex-
plained that using organization and group hierarchies in
determinations “is an abstract idea that has no particular
concrete or tangible form or application. It is a building
block, a basic conceptual framework for organizing infor-
mation, similar to the claims involving collecting, recogniz-
ing, and storing data in Content Extraction and the claims
in
CyberSource.” 793 F.3d at 1333–34.
Mr. Morinville argues that this case is like McRO, Inc.
v. Bandai Namco Games Am. Inc.,
837 F.3d 1299 (Fed. Cir.
2016), because his “[c]laims ‘are limited to rules with spe-
cific characteristics’ and ‘the computer automation is real-
ized by improving the prior art through the use of rules.’”
Appellant’s Br. 24 (quoting
McRO, 837 F.3d at 1313). The
claims in McRO, however, are for a system of lip synchro-
nization and facial expressions of animated characters, and
this court concluded that the computerized system in
McRO operated by rules whose implementation was not
previously available
manually. 837 F.3d at 1316. In
8 IN RE: MORINVILLE
contrast, when implementation was previously available
and was conducted, although without computer assistance,
Section 101 may negate eligibility for patenting.
We conclude that the Board correctly viewed claim 1 as
directed to the general concept of reorganizing an organi-
zation in conformity with function. The Board correctly
held that a claim “directed to a business administration
concept for management of a business, i.e., a conventional
business practice long prevalent in our system of com-
merce,” and recites a computer “merely as a tool,” is a gen-
eral abstract idea. Bd. Op. at 6. We affirm the Board’s
finding that Step One of the Alice protocol is met.
2. The Inventive Concept: Step Two
Technological features that constitute an inventive
concept will render the claim eligible for patenting.
Alice,
573 U.S. at 221. To constitute an inventive concept, such
features must be more than “well-understood, routine, con-
ventional activity.”
Mayo, 566 U.S. at 79. The inquiry is
“whether the claims do significantly more than simply de-
scribe [an] abstract method.” Ultramercial, Inc. v. Hulu,
LLC,
772 F.3d 709, 715 (Fed. Cir. 2014). The Court has
explained that “generic computer implementation” is insuf-
ficient to transform an abstract idea into a patent-eligible
invention,
Alice, 573 U.S. at 212, 221, and that “simply ap-
pending conventional steps, specified at a high level of gen-
erality” to an abstract idea does not make that idea eligible
for patenting,
Mayo, 566 U.S. at 82.
The Board applied Step Two to Mr. Morinville’s claims,
and concluded 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.” Bd. Op. at 7.
The Board found that the ’557 Application’s method is “an
application of a well-known business management concept
in a known computing environment,” and that the recita-
tion of a generic computer is insufficient to transform the
patent-ineligible abstract idea into a patent-eligible
IN RE: MORINVILLE 9
invention. Bd. Op. at 7. The Board concluded that the
Morinville method “amounts to [no] more than comparing
stored and input data and applying business rules.” Bd.
Op. at 8. The Board referred to the Examiner’s withdrawal
of previous rejections for anticipation and obviousness, and
explained that
[a]lthough the second step in the Alice analysis in-
cludes a search for an inventive concept, the anal-
ysis is not an evaluation of novelty or non-
obviousness, but rather, a search for “an element
or combination of elements that is ‘sufficient to en-
sure that the patent in practice amounts to signifi-
cantly more than a patent upon the [ineligible
concept] itself.’”
Bd. Op. at 10 (quoting
Alice, 573 U.S. at 218). The Board
stated that, even if the Morinville method were deemed to
be novel, this does not establish an inventive concept under
Section 101.
Mr. Morinville argues that the Board erred in Step
Two. He states that “the inventive concept is automatically
generating a dynamic functional organization from an op-
erating organization,” as set forth in elements (c),(d), and
(e) of claim 1. Appellant’s Br. 20. He points out that no
reference showed this automatic method.
Id. He stresses
that the Examiner and the Board found that the claims of
the ’557 Application were novel under § 102 and non-obvi-
ous under § 103, thus establishing the existence of an “in-
ventive concept.”
Id. at 21.
The PTOF responds that the ’557 Application’s claim
elements are stated to be performed by known computer
processes, to perform known steps in restructuring a busi-
ness organization. Appellee’s Br. 18. The PTO on this ap-
peal cites precedent holding that it is not “enough for
subject-matter eligibility that claimed techniques be novel
and non-obvious in light of prior art, passing muster under
35 U.S.C. §§ 102 and 103.” SAP Am., Inc. v. Investpic, LLC,
10 IN RE: MORINVILLE
898 F.3d 1161, 1163 (Fed. Cir. 2018). See Synopsys, Inc. v.
Mentor Graphics Corp.,
839 F.3d 1138, 1151 (Fed. Cir.
2016) (“a new abstract idea is still an abstract idea. The
search for a § 101 inventive concept is thus distinct from
demonstrating § 102 novelty.”); Intellectual Ventures I LLC
v. Symantec Corp.,
838 F.3d 1307, 1315 (Fed. Cir. 2016)
(“While the claims may not have been anticipated or obvi-
ous [from] the prior art . . . that does not suggest that the
idea . . . is not abstract, . . . .”).
The Board did not err in its application of precedent,
ruling that the claimed method is directed to an abstract
idea and that the computerized conduct of the method is
not an inventive step. We affirm the ruling that the claims
of the ’557 Application are directed to ineligible subject
matter under Section 101.
AFFIRMED
