Ex Parte Houseworth et al

Patent Trial and Appeal Board

May 17, 2018

13753194 (P.T.A.B. May. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/753, 194 01/29/2013
118925 7590 05/21/2018
Erise IP, P.A.
7015 College Blvd., Ste 700
Overland Park, KS 66211
FIRST NAMED INVENTOR
Jason Houseworth
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2513-22.02 1830
EXAMINER
BRINDLEY, BENJAMIN S
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
05/21/2018 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):
patents@eriseip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON HOUSEWORTH, GIAO T. CARRICO,
KEITH EHRHARD, and MICHAEL S. MCWILLIAMS
Appeal2016-004366
Application 13/753,194 1
Technology Center 3600
Before NINA L. MEDLOCK, MATTHEWS. MEYERS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-13 and 15-22 under both 35 U.S.C. § 101 and
35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM the rejection under 35 U.S.C. § 101, designating the
affirmance as a NEW GROUND OF REJECTION under 37 C.F.R.
§ 41.50(b). We REVERSE the rejections under 35 U.S.C. § 103(a).
1 According to the Appellants, the real party in interest is HRB Tax Group,
Inc., which operates as a subsidiary of H&R Block Group, Inc., which
operates as a subsidiary of H&R Block, Inc. Appeal Br. 2.
Appeal 2016-004366
Application 13/753,194
ILLUSTRATIVE CLAIM
1. A system for predicting an impact of income reported
on a 1099 form on a user's tax liability, the system comprising:
a deduction data store having stored thereon information
indicative of a plurality of tax deductions and a plurality of tax
credits;
a non-transitory computer readable storage medium
having a computer program stored thereon for predicting an
impact of income reported on a 1099 form on a user's tax
liability; and
a processing element associated with the computer
readable storage medium for executing the computer program,
wherein the execution of the computer program performs the
following steps:
acquiring known user information related to the
user and the user's taxes,
wherein the known user information includes at
least some information for a current tax year to date;
predicting at least some user information related to
the user and the user's taxes for a remainder of the
current tax year based at least partially on the known user
information,
wherein the step of predicting at least some user
information is performed at an intermediate time in the
current tax year and prior to termination of the current
tax year, such that the predicted user information is for
said remainder of the current tax year;
acquiring reportable income on a 1099 form to
date in the current tax year ("1099 reportable income to
date");
projecting, in said intermediate time in the current
tax year, an end of year 1099 reportable income for the
current tax year based at least partially on the 1099
reportable income to date;
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Application 13/753,194
comparing, in said intermediate time in the current
tax year, the known user information, the predicted user
information, and the projected end of year 1099
reportable income with requirements for at least one of
tax deductions and tax credits offered by a taxing
authority;
accessing the deductions data store to identify tax
deductions or tax credits having requirements related to
the known user information, the predicted user
information, and the projected end of year 1099
reportable income and identifying, in said intermediate
time in the current tax year, said deductions or credits;
predicting, in said intermediate time in the current
tax year, the impact of the projected end of year 1099
reportable income on the user's tax liability for the
current tax year based on the known user information, the
predicted user information, the projected end of year
1099 reportable income, and the requirements for at least
one of tax deductions and tax credits for the current tax
year;
predicting, in said intermediate time in the current
tax year, an accuracy probability for the projected end of
year 1099 reportable income based at least partially on
1099 accuracy probability information;
wherein the 1099 accuracy probability information
is indicative of at least one of a type of 1099 reportable
income, a frequency of receipt or payment of the 1099
reportable income, a particular time of a tax period when
the 1099 reportable income is received or paid, and a
1099 reportable income for one or more prior tax years;
and
presenting to the user, via the user interface, the
accuracy probability for the projected end of year 1099
reportable income.
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Application 13/753,194
CITED REFERENCES
The Examiner relies upon the following references:
Carver US 2004/0078307 Al
Peak et al. US 7,539,635 Bl
(hereinafter "Peak")
Burlison et al. US 7,693,769 Bl
(hereinafter "Burlison")
Torre et al. US 2010/0185561 Al
(hereinafter "Torre")
Hellman et al. US 2012/0053965 Al
(hereinafter "Hellman")
Eftekhari et al. US 8,407,113 Bl
(hereinafter "Eftekhari")
REJECTIONS 2
Apr. 22, 2004
May 26, 2009
Apr. 6, 2010
July 22, 2010
Mar. 1, 2012
Mar. 26, 2013
I. Claims 1-13 and 15-22 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.
II. Claims 1, 2, 5-9, 12, 13, 15-18, and 20-22 are rejected under
35 U.S.C. § I03(a) as unpatentable over Eftekhari, Hellman, Carver, and
Burlison.
III. Claims 3, 4, 10, and 11 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Eftekhari, Hellman, Carver, Burlison, and Peak.
IV. Claim 19 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Eftekhari, Hellman, Carver, Burlison, and Torre.
2 In addition to the enumerated rejections, the Final Office Action (pages 2-
4) rejects claims 1-13 and 15-22 under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, and also rejects claims 15-20 under
35 U.S.C. § 112 (pre-AIA), second paragraph. These rejections are
withdrawn. See Answer 2.
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FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
(New Ground of Rejection)
Applying the first step of the methodology delineated in Alice Corp.
Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014), the
rejection states: "The claims are directed to a fundamental economic
practice and method of tax preparation and filing to a taxing authority, such
as evaluation and preparation of forms to be filed with the IRS ( which has
been executed by practitioners for years)." Final Action 4. Further, under
the second Alice step, the claims do not amount to significantly more than
the abstract idea itself, because the limitations are merely instructions to
implement the abstract idea with generic computer functions that are well-
understood, routine, and conventional. Id. at 5.
Disputing the rejection, the Appellants argue claims 1-13 and 15-22
as a group. Appeal Br. 8-13; Reply Br. 2-5. Claim 1 is selected for
analysis herein. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Appellants argue that claim 1 is not directed to the identified
abstract idea, because the claim does not recite a method of tax preparation.
Appeal Br. 9. Rather, the claim is "directed to a system that predicts or
projects various taxpayer information," such as user information or 1099
reportable income, at an intermediate time in the current tax year, and
compares some of the predicted or projected information to tax deductions
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and credits. Id.; see also Reply Br. 3 ("The claims are directed to predicting
the impact of projected 1099 income on the user's tax liability.") Further,
the Appellants emphasize that tax preparation and filing would occur only at
the termination of the tax year and not at an intermediate time in the current
tax year, as the claims require. Appeal Br. 10.
Thus, the Appellants argue that the abstract idea identified by the
Examiner is more narrowly circumscribed than the Appellants'
characterization of the recited subject matter, but the Appellants do not
identify any reason why the rejection might fail to show that claim 1 is
directed to an abstract idea. Indeed, "[ a ]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1239 (Fed. Cir. 2016). Additionally, characterizing the
claims broader than the abstract idea set forth in the rejection, as the
Appellants do - i.e., the characterization of the claims as predicting the
impact of an income report on a user's tax liability, during the course of a
current tax year (see Appeal Br. 9) - merely amounts to identifying an
alternative abstract idea to which claim 1 is directed.
Therefore, the Appellants do not persuasively argue that claim 1 is not
directed to an abstract idea.
The Appellants also argue that the claims "do not seek to tie up" the
identified abstract idea. Id. at 10-11. Yet, although "preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). See also Answer 3.
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In regard to the second step of the Alice analysis, the Appellants
contend:
[O]ne element that is significantly more than the alleged
abstract idea is the prediction of the impact of 1099 reportable
income before the preparation of the tax return and providing an
accuracy probability for projected end of year 1099 reportable
income. As another example, Appellant respectfully submits
that it is not well-understood, routine, nor conventional to
predict the accuracy probability wherein such probability is
indicative of a type of 1099 reportable income, a frequency of
receipt or payment of the 1099 reportable income, a particular
time of a tax period when the 1099 reportable income is
received or paid, or a 1099 reportable for one or more prior tax
years.
Appeal Br. 11-12.
These arguments are not persuasive.
As an initial matter, the second Alice step endeavors to identify any
"additional elements" of the claimed subject matter - i.e., recited elements,
in addition to the judicially excepted concept ( such as an abstract idea) -
that would be "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 Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 73 (2012)). Yet, the Appellants do not clearly delineate
which aspects of the claimed subject matter (referenced in the above
quotation) are regarded as elements that are additional to the abstract idea of
predicting an impact of an income report on a user's tax liability- nor do
the Appellants explain why any such additional elements might be
sufficiently "significant[]," under Alice, 134 S. Ct. at 2355, so as to render
claim 1 patent-eligible. Furthermore, the identified uses of particular
features of income data (i.e., the circumstances of 1099 reports) - insofar as
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these features recite something other than the identified abstract idea itself
-amount to field-of-use elements, which cannot give rise to patent
eligibility. See Bilski v. Kappas, 561 U.S. 593 610-11 (2010) ("[T]he
prohibition against patenting abstract ideas 'cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment' or adding 'insignificant postsolution activity."') ( quoting
Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)); see also Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) ("The
Supreme Court and this court have repeatedly made clear that merely
limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract.")
In addition, the Appellants contend that the claimed technique is
patent-eligible, because "predicting the impact of the 1099 reportable
income to date on the user's tax liability and determining the probability of
the accuracy are necessarily rooted in computer technology and was not a
business practice known to the pre-Internet world." Appeal Br. 12.
According to the Appellants, making such predictions "would not be
something that a taxpayer would do manually," in view of "[t]he complexity
of the tax code, the complexity of the performed calculations, combined with
their year-to-date variability." Id. Rather, the claimed technique "is a
strategy made feasible by computer systems." Id.
This argument is unpersuasive, because the use of a computer to
perform tasks more quickly or more accurately is not sufficient to render a
claim eligible. See Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1367 (Fed. Cir. 2015) ("[C]laiming the improved speed or
efficiency inherent with applying the abstract idea on a computer [ does not]
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provide a sufficient inventive concept."); OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) ("[R]elying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible."); Bancorp Servs., L.L. C. v. Sun Life Assur.
Co. of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the
required calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed subject
matter.")
In view of the foregoing, the Appellants do not persuade us of error in
the rejection of claim 1. Therefore, we sustain the rejection of claim 1 and,
per 37 C.F.R. § 4I.37(c)(l)(iv), claims 2-13 and 15-22 under
35 U.S.C. § 101.
However, because we characterize the identified abstract idea
differently than the Examiner, we designate this Decision as containing a
new ground of rejection, in accord with 37 C.F.R. § 4I.50(b).
Obviousness
1. Independent Claims 1 and 13;
Dependent Claims 2-7 and 15-21
The Appellants argue claims 1-13 and 15-21 3 as a group. Appeal Br.
13-27; Reply Br. 5-9. We select claim 1 for analysis, under 37 C.F.R.
§ 4I.37(c)(l)(iv).
3 Because claim 22 depends from claim 8, we regard as inadvertent the
Appellants' inclusion of claim 22, in regard to the issues addressed at, e.g.,
pages 13-27 of the Appeal Brief, as well as the omission of claim 22, in
regard to the issues addressed at, e.g., page 27 of the Appeal Brief.
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The Appellants contend that independent claim 1 was rejected
erroneously, because the identified prior art does not teach or suggest:
predicting, in said intermediate time in the current tax
year, an accuracy probability for the projected end of year 1099
reportable income based at least partially on 1099 accuracy
probability information;
wherein the 1099 accuracy probability information is
indicative of at least one of a type of 1099 reportable income, a
frequency of receipt or payment of the 1099 reportable income,
a particular time of a tax period when the 1099 reportable
income is received or paid, and a 1099 reportable income for
one or more prior tax years;
Appeal Br. 18-20.
The rejection states that Eftekhari teaches these features at column 5
(lines 28-52), column 12 (lines 10-34), and Figure 4. Final Action 8-9.
Yet, as the Appellants point out, Eftekhari is directed generally to a
tax preparation system for assisting users in "prepar[ing] their taxes during
the tax preparation season following the current tax year, as opposed to
during an intermediate time in the current tax year." Appeal Br. 13 (citing
Eftekhari, Abstract, col. 1, 11. 18-54, col. 6, 11. 4--9, col. 10, 11. 58-66). See
also id. at 19 (citing Eftekhari, col. 12, 11. 41--43). Accordingly, Eftekhari's
determinations of the "confidence and/or relevance" of tax data cannot teach
the recited "predicting in said intermediate time in the current tax year, an
accuracy probability for the projected end of year 1099 reportable income"
of claim 1.
Therefore, we do not sustain the rejection of claims 1-13 and 15-21
under 35 U.S.C. § 103(a).
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2. Independent Claim 8;
Dependent Claims 9--12 and 22
The Appellants contend that independent claim 8 was rejected
erroneously, because the identified prior art does not teach or suggest:
predicting, in said intermediate time in the current tax
year, an accuracy probability that the taxpayer will qualify for
the deductions or credits based at least partially on a set of
accuracy probability information,
wherein the set of accuracy probability information is
indicative of at least one of a type of deduction or credit, known
tax information related to the taxpayer for one or more prior tax
years, previous deductions and credits taken by the taxpayer, a
particular time of a tax period when the 1099 reportable income
is received or paid, and a 1099 reportable income for one or
more prior tax years
See Appeal Br. 27.
The Appellants explain that "the final Office Action on pages 14--15
does not cite any art for teaching" the above-identified features of claim 8.
Id. See also Reply Br. 9-10.
We agree. See Final Action 13-15.
Therefore, we do not sustain the rejection of independent claim 8 and
dependent claims 9-12 and 22 under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-13 and 15-
22 under 35 U.S.C. § 101, designating this affirmance as a NEW GROUND
OF REJECTION under 37 C.F.R. § 4I.50(b).
We REVERSE the Examiner's decision rejecting claims 1-13 and
15-22 under 35 U.S.C. § 103(a).
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This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 4I.50(b)
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