Ex Parte Howell et al

Patent Trial and Appeal Board

Feb 4, 2019

14113154 (P.T.A.B. Feb. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/113,154 05/15/2014
118925 7590 02/06/2019
Erise IP, P.A.
7015 College Blvd., Ste 700
Overland Park, KS 66211
FIRST NAMED INVENTOR
Bryan R. Howell
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.
2513-37.00 4839
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
02/06/2019 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 BRYAN R. HOWELL, JASON A. MOORE,
R. ALAN NEELY, and JIM L. BUTTONOW
Appeal2018-000973 1
Application 14/113,154
Technology Center 3600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 60-67. App. Br. 5. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is listed as 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. App. Br. 3.
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Application 14/ 113, 154
STATEMENT OF THE CASE
Appellants' disclosure relates to "systems and methods for response
or interaction with a taxing agency during the examination of a tax return."
Spec. 1.
Claim 60 is independent, and reproduced below for reference:
60. A non-transitory computer readable storage medium with
a computer program stored thereon, wherein the computer
program is operable to generate one or more solutions for
responding to at least one examination issue raised by a taxing
agency with respect to a taxpayer's tax return, wherein the
computer program includes instructions for instructing one or
more processors to perform the steps of:
receiving tax information for the taxpayer, wherein at
least some of the tax information is extracted from the taxing
agency;
presenting a tax interview to the taxpayer, wherein the
tax interview requests the following information from the
taxpayer: identification of any prior collection by the taxing
agency, a monetary amount owed to the taxing agency,
indication of any non-filed tax return with the taxing agency,
income, and financial ability to pay the taxing agency the
monetary amount owed to the taxing agency;
receiving information indicative of one or more taxpayer
goals relative to the one or more solutions, wherein the one or
more taxpayer goals identifies the taxpayer's preference for at
least one characteristic of the one or more solutions;
in response to the tax interview, the information received
from the taxpayer, and the received one or more taxpayer goals,
generating said one or more solutions for responding to the
examination issue;
receiving an indication from the taxpayer that at least one
of said one or more solutions is acceptable;
in response to receiving the taxpayer's indication of the
acceptable solution, determining information needed to
implement said acceptable solution;
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wherein determining information needed to implement
the acceptable solution includes reviewing the received tax
information to determine that it is the information needed to
implement the acceptable solution;
wherein the at least one solution is dependent on the
following: information identifying that the taxpayer owes the
monetary amount to the taxing agency and receipt of a final
notice to effectuate a levy on the taxpayer; and
presenting instructions to the taxpayer to facilitate
implementing the acceptable solution.
The Examiner's Rejection
Claims 60-67 stand rejected under 35 U.S.C. § 101 as being directed
to a judicial exception to patent eligibility without significantly more. Final
Act. 2.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. Arguments Appellants could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner determines the claims are patent ineligible under 35
U.S.C. § 101, because the claims are directed to an abstract idea of resolving
(i.e., generating and implementing an acceptable solution to) a tax return-
related examination issue, which is a fundamental economic practice, and
the claims do not recite limitations that provide significantly more than the
abstract idea itself. Ans. 2-5; see also Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 573 U.S. 208,217 (2014) (Describing the two-step framework "for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.").
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After the mailing of the Answer and the filing of the Briefs in this
case, the USPTO published revised guidance on the application of§ 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter "Memorandum"). Under the Memorandum, the
Office first looks to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then look to whether
the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
We are not persuaded the Examiner's rejection is in error. We adopt
the Examiner's findings and conclusions as our own, to the extent consistent
with our analysis. We add the following primarily for emphasis and
clarification with respect to the Memorandum.
Appellants argue the Examiner errs in determining the claims are
directed to an abstract idea, because "like the claims in DDR Holdings [DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)], the
claims relate to the economy and commerce but are not directed to a
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fundamental economic practice." Reply Br. 6. Appellants further contend
the claims "are not directed to an 'uninstantiated idea"' because "the claims
do not recite a mental process that can be performed in the human mind" and
"because the steps involved in the claim require interaction with the outside
world." Reply Br. 7.
We agree with the Examiner that claim 60 is directed to an abstract
idea. See Final Act. 2; Ans. 2-3. Claim 60 recites the steps used to
accomplish the generation of "one or more solutions for responding to at
least one examination issue raised by a taxing agency with respect to a
taxpayer's tax return." See claim 60, supra. The recited steps of "receiving
tax information," "presenting a tax interview," "receiving information ... of
one or more taxpayer goals," "generating one or more solutions," "receiving
an indication ... that at least one ... solution[] is acceptable," "determining
information need to implement," "reviewing the received tax information,"
and "presenting instructions" comprise fundamental economic principles or
practices and/or commercial or legal interactions; thus the claim recites the
abstract idea of "certain methods of organizing human activity."
Memorandum, Section I (Groupings of Abstract Ideas); see also Spec. 12:8-
10 and Table 1 (requested information from the taxpayer). 2
2 See also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("The concept of
hedging, described in claim 1 and reduced to a mathematical formula in
claim 4, is an unpatentable abstract idea."); Alice, 573 U.S. at 218 ("These
claims are drawn to the abstract idea of intermediated settlement."); Buysafe,
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims that "are
squarely about creating a contractual relationship----a 'transaction
performance guaranty"' held as "directed to an abstract idea"); Accenture
Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed.
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We are unpersuaded by Appellants' arguments that the claims recite
"significantly more" because claim 60 recites "both identifying the
examination issue and solving the examination issue." Reply Br. 9; see also
App. Br. 16-17. These limitations do not, for example, reflect an
improvement in the functioning of a computer, or an improvement to other
technology or technical field. See Ans. 13. Rather, the disputed limitations
may improve a taxpayer's position during a tax audit, and are part of the
abstract idea itself. See Spec. 2: 14--15 ("In operation, the inventions can be
used to efficiently and accurately resolve the examination of a tax return.").
Based on the record before us, we do not discern "a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception." Memorandum, Section III(A)(2).
Accordingly, the claim does not integrate the judicial exception into a
practical application. See Memorandum, Section III(A)(2) (Prong Two: If
the Claim Recites a Judicial Exception, Evaluate Whether the Judicial
Exception Is Integrated Into a Practical Application). Nor does the claim
include a specific limitation or a combination of elements that amounts to
significantly more than the judicial exception itself. See Memorandum,
Section III(B) (Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept). The remaining
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); Bancorp Servs., L.L. C. v. Sun Life Assurance
Co. of Can. (US.), 687 F.3d 1266, 1277 (Fed. Cir. 2012) (determining a
"'method for managing a life insurance policy comprising' seven steps" is
abstract).
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claim elements only recite generic computer components that are well-
understood, routine, and conventional. See Ans. 4; Spec. 9: 1-10: 17, Figs.
2-5; Alice, 573 U.S. at 226.
Accordingly, we agree with the Examiner that claim 60 is patent
ineligible, as well as dependent claims 61----67 not separately argued. See
App. Br. 17.
DECISION
The Examiner's decision rejecting claims 60----67 is affirmed.
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
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