In Re Morinville: Computer Generated Business Organization Not Patentable
In the case of In re Morinville, the Court of Appeals for the Federal Circuit (“Court”) affirmed on appeal the decision of the Patent Trial and Appeal Board (“PTAB”) to reject all the claims of U.S. Patent Application No. 11/003,557 (“Application”).
As shown below, independent claim 1 of the Application recites a method of reorganizing a business hierarchy into a more centralized functional hierarchy.
A method implemented in a computer for dynamically generating a hierarchal functional structure from a hierarchal operational structure, comprising the steps: providing a hierarchal 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 hierarchal 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 hierarchal functional structure of the identified positions; and controlling user access to business processes based on the hierarchal functional structure; wherein each of the steps is automatically implemented in the computer.
Under the first step of the Alice framework, the Court affirmed that claim 1 is directed to an abstract idea. Specifically, the abstract idea of creating a functional organizational structure from a hierarchal operational structure and controlling access to business processes based on the created functional structure.
Concerning the use of a computer to implement the rules that define the implementation of the abstract idea, the Court noted that computer-based efficiency does not save an otherwise abstract idea.
Moreover, concerning the defined rules themselves, the Court noted that rules implemented on a computer that were previously available to be implemented without the assistance of a computer also could not save an otherwise abstract idea.
Under the second step of the Alice framework, the Court affirmed that the recitation of the generic computer does not provide the requisite inventive concept and, as such, is insufficient to transform the method recited in claim 1 into a patent-eligible invention.
Concerning the inventive concept, the Court noted that such features must be more than “well-understood, routine, conventional activity.”
Comments: While software can be patent eligible in the U.S., the recited steps of the claimed software method must be defined with specificity and not as a black box.
In drafting these specific software steps, the recited functionality should not describe functions that can be reasonably performed by a human without the assistance of a computer.
Moreover, the claimed software steps should not describe only functionality that is regularly provided by an operating system implemented on the computer.