Ex Parte Foley et al

Patent Trial and Appeal Board

Feb 14, 2017

11841601 (P.T.A.B. Feb. 14, 2017)

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.
11/841,601 08/20/2007 John T. Foley 85758-728184-105510US 2278
20350 7590 02/16/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
SHRESTHA, BIJENDRA K
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
02/16/2017 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):
ipefiling@kilpatricktownsend.com
jlhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN T. FOLEY and
STEVEN NICKLANOVICH
Appeal 2014-0065821
Application 11/841,6012
Technology Center 3600
Before NINA L. MEDLOCK, AMEE A. SHAH, and
MATTHEW S. METERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 47—51, 67, 68, 70-72, and 79-100. We have jurisdiction
under 35 U.S.C. § 6(b).
1 Our Decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
December 12, 2013) and Reply Brief (“Reply Br.,” filed May 6 2014), and
the Examiner’s Answer (“Ans.,” mailed March 7, 2014) and Final Office
Action (“Final Act.,” mailed June 13, 2013).
2 Appellants identify Charles Schwab & Co., Inc., as the real party in
interest (Appeal Br. 3).
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Application 11/841,601
We REVERSE.
CLAIMED INVENTION
Appellants’ claimed invention relates generally to “a method for
forecasting the tax consequences that would result from performing a
specified financial transaction or series of transactions” (Spec. 1,11. 13—15).
Claims 47, 79, and 93 are the independent claims on appeal.
Claim 47, reproduced below, with added bracketed notations and
paragraphing, is illustrative of the subject matter on appeal:
47. A computer system for forecasting and
comparing financial effects of holding a first asset versus
selling the first asset and purchasing a second asset,
comprising:
[a] a processor; and
[b] a non-transitory computer readable medium
comprising code, executable by a processor, for
implementing a method comprising the steps of
[c] generating, with the processor, a first sequence
of one or more web pages, wherein the first sequence of
the one or more web pages presents a user with an option
using a link to compare the financial effects,
[d] in response to selection of the option using the
link to compare the financial effects, generating a second
sequence of one or more web pages, wherein the second
sequence of one or more web pages contains a plurality of
fields for the user to enter information describing the first
asset, second asset, and user tax rates and wherein the
second sequence of one or more web pages further
includes a tax rate assistance option that generates a
sequence of one or more web pages to assist the user in
determining the user’s tax rate based on the user’s taxable
income,
[e] wherein the sequence of one or more web pages
to assist the user in determining the user’s tax rate based
on the user's taxable income comprises fields for user input
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Application 11/841,601
of information describing the user’s tax filing status,
taxable income, state income tax rates, and state long term
capital gains rates,
[f] in response to receiving information describing
the first asset, calculating the financial effects of holding
or selling the first asset using information describing the
first asset,
[g] in response to receiving information describing
the second asset, calculating the financial effects of selling
the first asset and buying the second asset using
information describing the first asset and second asset, and
[h] generating a third sequence of one or more web
pages displaying the financial effects of holding or selling
the first asset, wherein the financial effects include
investment tips that comprise an amount of time that the
first asset must be held to avoid short-term capital gains
taxes.
REJECTION3
Claims 47—51, 67, 68, 70-72, 79-97, 99, and 1004 are rejected under
35 U.S.C. § 103(a) as unpatentable over Gottstein (US 7,047,217 Bl, iss.
May 16, 2006), Newman (US 6,189,018 Bl, iss. Feb. 13, 2001), Danneels
(US 6,038,598, iss. Mar. 14, 2000), and KJE Computer Solutions, as
3 A rejection of claims 47—51, 67—68, and 70-72 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter was withdrawn (see Ans. 2).
Although the record is unclear as to whether claims 79—92 were also rejected
under 35 U.S.C. § 101 as being directed to non-statutory subject matter (see
Final Act. 3), the Answer makes clear, under the Restatement of Rejection
heading, that there is no pending rejection under 35 U.S.C. § 101 (see
Ans. 2-3).
4 For purposes of clarity, we note that although Appellants (see Appeal
Br. 12) and Examiner (see Final Act. 6; Ans. 3) both indicate that claim 98 is
rejected under 35 U.S.C. § 103(a), the Claims Appendix indicates that claim
98 is cancelled (see Appeal Br. 39 (Claims App.)).
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Application 11/841,601
retrieved from the Wayback Machine, November 16, 1999;
(http://web.archive.org/web/19991116114957/http://dinkytown.net/#TAX)
(hereinafter, “KJE”).5
ANALYSIS
Section 14 of America Invents Act (AIA)
Claims 47, 49, 51, 70, 79, and 93
The Examiner takes the position that claims 47, 49, 51, 70, 79, and 93
each include limitations which
are clearly a tax strategy to avoid short-term capital gain taxes
and saving amount by utilizing long-term capital gain tax rates
which makes it applicable to Tax Strategies Issues under
Section 14 of the Leahy-Smith America Invents Act (AIA) as
these claims recite a plan for reducing, avoiding, or deferring a
tax liability. Accordingly, those claim limitations (including the
dependent claims) are treated as being within the prior art and is
insufficient to differentiate the invention of the claims from the
prior arts.
(See Ans. 5 (emphasis omitted); see also Final Act. 4—6).
In response, Appellants argue
[a] 1 though some of the information provided to the user (e.g.,
investment tips) could be used by the user to perform various
financial activities, the claims do not recite the user using or
interpreting the provided information in any way, nor do the
claims limit the user to carry out any tax strategy, nor do the
claims limit the use of any tax strategy.
(Reply Br. 2). We agree with Appellants.
5 We note that the Examiner treats claims 47, 49, 51, 70, 79, and 93 as
including subject matter directed to tax strategies deemed to be within the
prior art under Section 14 of the America Invents Act (AIA) (see Final Act.
4—6; see also Ans. 2—3).
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Application 11/841,601
Here, the Examiner has not established that the limitations in question
are directed to a tax strategy for reducing, avoiding or deferring a tax
liability because no steps are taken that explicitly or implicitly change any
such liability.6 That is, although the claims at issue include steps which
determine “the financial effects of holding or selling the first asset, wherein
the financial effects include investment tips that comprise an amount of time
that the first asset must be held to avoid short-term capital gains taxes”
(Appeal Br. 31 (Claims App.)), the claims do not go so far as to actually
execute steps to avoid the short-term capital gains taxes. Therefore, as
Appellants point out, “the limitations are clearly both ‘severable from any
tax strategy’ and ‘do[] not limit the use of any tax strategy by any taxpayer
or tax advisor,’ and thus fall under the exclusion to Section 14 set forth in
Section 14(c)(2)” (Reply Br. 2).
Accordingly, we agree with Appellants that all limitations in
claims 47, 49, 51, 70, 79, and 93 must be considered in any rejection under
35U.S.C. §§ 102 and 103.
KJE as Prior Art
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claims 47—51, 67, 68, 70-72, 79-97, 99, and 100 under
6 See Memorandum from Robert W. Bahr, Acting Associate Commissioner
for Patent Examination Policy, to the Patent Examining Corps, Tax
Strategies Are Deemed To Be Within the Prior Art, (September 20, 2011),
available at,
(https://www.uspto.gov/sites/default/files/aia_implementation/tax-strategies-
memo.pdf); see also Section 14—Tax Strategies Deemed to be Within the
Prior Art Introductory Examples, available at,
(https://www.uspto.gov/sites/default/files/aia_implementation/tax-strategies-
training-examples.pdf).
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35 U.S.C. § 103(a) as unpatentable over a combination of Gottstein,
Newman, Danneels, and KJE because
the alleged “KJE reference” is not available as prior art for at
least the following reasons: (1) the “KJE reference” is a
collection of separate documents, collated by the Examiner, and
therefore the reference cannot be considered a single “printed
publication”; (2) the “KJE reference” has not been properly
authenticated; and (3) the “KJE reference” has not been shown
to be publicly accessible to one having skill in the art at the time
the application was filed.
(Appeal Br. 12—14; see also Reply Br. 3).
At the outset, we note that the KJE reference consists of archived
copies of pages from a “dinkytown.net” website, retrieved from the Internet
archive Wayback Machine. Based on the Uniform Resource Locator (URL)
content at the bottom of each page, pages 1 through 4, as numbered by
Appellants, appear to represent web pages that were published (publicly
available) on the “dinkytown.net” site in the year 1999. We acknowledge,
as Appellants point out, that the URL at the bottom of pages 1 through 2 of
KJE indicates that pages 1 through 2 were “available on November 16,
1999” while the URL at the bottom of pages 3 through 4 of KJE indicates
that pages 3 through 4 were “available on December 5, 1999” (see Appeal
Br. 13), however, both of these dates antedate the earliest effective filing
date of the instant application U.S. 11/841,601, filed August 20, 2007, which
claims benefit as a divisional application to U.S. 09/798,110, filed March 1,
2001. We also find it was reasonable for the Examiner to refer to pages 1
through 4 of the KJE reference as one document because it is clear that the
pages are linked, i.e., one of ordinary skill would appreciate that by clicking
on the “U.S. 1040 Tax Estimator” link on page 2 of KJE, which is described
as “How much tax will you pay in 1999? Use this 1040 tax calculator to help
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determine your tax bill for 1999” (KJE 2), you would land on the webpage
depicted on page 3 of KJE which states “How much tax will you pay in
1999? Use this 1040 tax calculator to help determine your tax bill for 1999”
(id. 3).
With respect to Appellants’ argument that “the “KJE reference” has
not been properly authenticated” (Appeal Br. 13—14), we note that the rules
of evidence are somewhat relaxed in the instant ex parte proceedings. That
is, “[t]he general rule is that administrative agencies like the PTO are not
bound by the rules of evidence that govern judicial proceedings.” In re
Epstein, 32 F.3d 1559, 1565 (Fed. Cir. 1994). As such, in ex parte
proceedings before the Board, the PTO is not bound by hearsay evidentiary
rules for authenticating prior art documents. We also note that the KJE
reference is itself dated by providing a copyright notice of 1998 on pages 2
and 4 (KJE 2, 4).
Lastly, with respect to Appellants argument that “the ‘KJE reference’
has not been shown to be publicly accessible to one having skill in the art at
the time the application was filed” (Appeal Br. 14—15), we note that “[pjrior
art disclosures on the Internet or on an on-line database are considered to be
publicly available as of the date the item was publicly posted.” (See MPEP
§ 2128). Appellants have not provided any evidence to show that the
website pages from which KJE was retrieved are not reliable as to presumed
dates of publication. Nor have Appellants provided any other evidence
tending to show that the content described by KJE was not publicly available
on the archive dates provided for KJE by the Wayback Machine.
Accordingly, we are not persuaded that the Examiner erred in relying
on KJE as available prior art.
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Obviousness
Independent claim 47 and dependent claims 48—51, 67, 68, and 70—72
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 47 under 35 U.S.C. § 103(a) because the
combination of Gottstein, Newman, Danneels, and KJE does not disclose or
suggest “wherein the second sequence of one or more web pages further
includes a tax rate assistance option that generates a sequence of one or more
web pages to assist the user in determining the user’s tax rate based on the
user’s taxable income,” as recited in part by limitation [d] of independent
claim 47 (App. Br. 15—16; see also Reply Br. 4).
The Examiner maintains that the rejection is proper, and cites KJE as
disclosing the argued feature (see Final Act. 10-11). More particularly, the
Examiner takes the position:
[a]s per tax rate assistance, KJE Reference teaches clicking at
Taxes: U.S. 1040 Tax Estimator on top of page 2 takes [a user]
to page 1, Heading: “Click here to put these calculators on your
website!” The website Tax Calculators provide 1040 Tax Form
for 1999 which displays estimated tax/refund for Year 1999
based on plurality of user inputs such as tax status, income,
deductions and credits entered by the user; The Line 39 in page
2 further teaches Taxable Income which is Adjusted Gross
Income (AGI) minus itemized or standard deduction and
deduction for exemptions and Line 49 teaches Total Income after
Credits and Line 56 teaches Total Tax considering all credits and
deduction represent Tax Rate of AGI.
(Ans. 6 (citing KJE 1—4) (emphasis original)).
Gottstein is directed to a system for “for processing financial
securities and instrument” which “accurately determines the after-tax
proceeds an investor could expect to have at the end of a holding period for
each of a set of investment strategies involving options, and determines an
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optimal strategy for maximizing such after-tax proceeds” (Gottstein, col. 1,
11. 24—30). Gottstein identifies that “the consequences of selling a currently
held investment instrument to buy an alternate instrument can only be
accurately evaluated by knowing the tax consequences of the transaction in
advance” {id. at col. 1,11. 41—45; see also id. at col. 5,1. 58 — col. 6,1. 5).
More particularly Gottstein discloses that its system provides:
(1) A priori knowledge to provide the ability for investors
to see the tax consequences of their investment decisions in
advance;
(2) “What if’ calculations allowing investors to
immediately see the projected results of their transaction
decisions without actually executing the trades or doing their tax
returns; and
(3) Self-managed expectations in which evaluation of the
expected return of an investment, either one that is currently held
or an alternate that is being considered, is a subjective process
that involves some risk. Therefore, it is important for users to
evaluate different investment strategies under different sets of
performance expectations. In the disclosed computerized
system, expectations (such as, for example, price targets) are
specified by the user. Users can either use expectations supplied
by a fund manager or use expectations which they have
determined themselves.
{Id. at col. 2,1. 57 — col. 3,1. 7). Gottstein discloses that it allows a user or
financial advisor to enter information into its system such as “short-term and
long-term tax rates and other related parameters” {id. at col. 7,11. 2—12).
Gottstein also discloses that its system provides a chart that can compare the
after-tax proceeds for “six investment disciplines that measure the value of
the investment” {id. at col. 9,11. 5—29; see also id. at Fig. 8).
Newman is directed to a system for “generating universal resource
locator links through a computer graphical user interface linking editor”
(Newman, col. 1,11. 20—22; see also id. at Fig. 3).
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Danneels is directed to a method which can “map[] a plurality of web
pages to a single uniform resource locator (URL)” (Danneels, col. 1,
1. 66 — col. 2,1. 1). Danneels discloses that its system “allow[s] a content
author to generate multiple sets of web pages and to set the conditions which
the server evaluates to determine which of the web page sets to return in
response to a user’s request” (Danneels, col. 2,11. 35—39).
KJE is a set of screen shots from a website entitled “Java Financial
Calculators from Dinkytown.net!” and includes a “U.S. 1040 Tax Estimator”
link that can be used to “help determine your tax bill for 1999” (KJE 1—2).
More particularly, KJE discloses
Use this 1040 tax calculator to help determine your tax bill for
1999. By entering your tax status, income, deductions and
credits we can estimate your total taxes for 1999. Based on your
projected withholdings for the year, we then show you your
refund or amount you may owe the IRS next April!
(Id. at 3). KJE also includes various “[djefinitions” (id.) such as “line 39
Taxable income” which is defined as “[y]our total taxable income is your
AGI minus your itemized or standard deduction, and your deduction for
exemptions;” “line 49 Total tax after credits” which is defined as “[t]his is
the total federal income tax you will need to pay in 1999;” and “line 56 Total
tax” which is defined as “[gjrand total of your 1999 Federal tax bill” (id.
at 4).
We have reviewed the cited portions of KJE, on which the Examiner
relies, and agree with Appellants that nothing in the portions of KJE relied
on by the Examiner discloses or suggests “wherein the second sequence of
one or more web pages further includes a tax rate assistance option that
generates a sequence of one or more web pages to assist the user in
determining the user’s tax rate based on the user’s taxable income,” as
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recited in part by limitation [d] of independent claim 47 (see App. Br.
15—16; see also Reply Br. 4). As Appellants point out, “[t]he ‘total taxes’
and ‘tax bill’ described in KJE refer to the total tax liability of a taxpayer
and the amount owed to the IRS, respectively, and hence are different from
the claimed ‘tax rate’” (Appeal Br. 16; see also Reply Br. 4). Thus, we
agree with Appellants that “a total amount of taxes on a Federal tax bill, [is]
not a tax rate” (Reply Br. 4), as required in part by limitation [d] of
independent claim 47.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 47 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner’s rejection of dependent claims 48—51, 67,
68, and 70-72.
Independent claims 79 and 93 and dependent claims 80—92, 94—97, 99 and
100
Independent claims 79 and 93 include language substantially similar
to the language of independent claim 47. Therefore, we do not sustain the
Examiner’s rejection under 35 U.S.C. § 103(a) of independent claims 79 and
93, and claims 80-92, 94—97, 99 and 100, which depend therefrom, for the
same reasons set forth above with respect to independent claim 47.
DECISION
The Examiner’s rejection of claims 47—51, 67, 68, 70-72, 79-97, 99,
and 100 under 35 U.S.C. § 103(a) is reversed.
REVERSED
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