Ex Parte Miller

Board of Patent Appeals and Interferences

Nov 21, 2008

10782977 (B.P.A.I. Nov. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID S. MILLER
____________

Appeal 2008-0174
Application 10/782,9771
Technology Center 3600
____________

Decided: November 21, 2008
____________

Before JAMESON LEE, SALLY C. MEDLEY, and JAMES T. MOORE,
Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.

DECISION ON APPEAL

1 Application for patent filed 23 February 2004 claims priority benefit under
35 U.S.C. § 120 of application 09/073,027 which matured into patent
6,202,052 (‘052) and application 09/776,707, which matured into patent
6,697,787 (‘787). Both the ‘052 patent and the ‘787 patent are subject to
reexamination (90/006,713 and 90/006,969). In connection with both
reexaminations, Simplification sought review of a final rejection of certain
claims (Appeal Nos. 2007-0518 and 2007-0712). We reversed all rejections
made. The rejections made and the issues in 2007-0518 and 2007-0712 are
closely related to the issues and rejections made in this appeal.
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Simplification, LLC (“Simplification”), the real party in interest, seeks
review under 35 U.S.C. § 134(a) of a Final Rejection of claims 21-68, the
only claims remaining in the application on appeal. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The invention relates to an apparatus and method for collecting and
processing tax data. A tax data provider provides tax data to an electronic
intermediary. The tax data is processed and used to prepare an electronic tax
return.
Claims 21-68 are pending and on appeal. Claim 21 is representative and
reads as follows:
A computer-readable medium embodying a computer program for
automatic tax data collection by an electronic intermediary, said computer
program comprising code segments for:
connecting electronically said electronic intermediary to a tax data
provider;
collecting electronically tax data from said tax data provider, wherein
said tax data is taxpayer specific tax data;
processing electronically said tax data collected electronically from said
tax data provider to obtain processed tax data; and
preparing electronically an electronic tax return using said processed tax
data.
The Examiner relies on the following prior art in rejecting the claims on
appeal:
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Scott Beamer, A Marriage of Convenience. (MacInTax, MacMoney,
and Dollars & Sense for tax preparation and planning), MacUser, v3, n3, p
102(4) (March 1987).
It’s W-2 Time – But This Year There’s a Better Way to Do your Taxes,
PR Newswire, (February 1987).
The Examiner rejected claims 21-68 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner rejected claims 21-68 under 35 U.S.C.§ 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
The Examiner rejected claims 21, 22, 24, 29, 30, 32, 37, 38, 40, 45, 46,
48, 53, 54, 56, 61, 62 and 64 under 35 U.S.C. § 102(b) as anticipated by
Beamer as further supported by “It’s W-2 Time.”
The Examiner rejected claims 23, 25-28, 31, 33-36, 39, 41-44, 47, 49-52,
55, 57-60, 63, and 65-68 under 35 U.S.C. § 103(a) as unpatentable over
Beamer and further in view of “It’s W-2 Time.”
A. Findings of Fact (“FF”)
The record supports the following findings of fact as well as any other
findings of fact set forth in this opinion by at least a preponderance of the
evidence.
1. The Examiner rejected claims 21-68 under 35 U.S.C. 112, ¶ 1, as
the Specification allegedly does not provide the intended metes and bounds
of:
1) “collecting electronically tax data from said tax data
provider” (as recited in claims 21, 29, 37, 45, 53, and 61) (Ans. 4);
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2) “tax data corresponds to at least one item of tax liability
reported on at least one of an Internal Revenue Service (“IRS”) form,
a state form, a local form, and a foreign tax form” (as recited in claims
24-26, 32-34, 40-42, 48-50, 56-58, and 64-66) (Ans. 4-5).
2. Simplification’s Specification states:
Hence, with the electronic collection of tax data as in step 12, the
invention eliminates the current requirement that a taxpayer manually
collect the tax data, eliminates the current requirement that a taxpayer
manually enter such tax data onto a tax return or into a computer, and
eliminates the need for all, or virtually all, intermediate hard copies of
tax data, thereby saving paper, time, and cost.

In step 13, the electronic intermediary processes the tax data
obtained electronically from the tax data providers in step 12. In the
present invention, step 13 can be implemented using a computer
program similar to the computer programs currently available in the
market place, such as TurboTax, which is a registered trademark of
Intuit, Inc. Although step 13 can be implemented with current
technology, the current technology requires that the tax data and other
information relevant to the taxpayer be inputted manually. With the
present invention, this information is obtained as described above in
steps 11 and 12. (Spec. 13:13 to 14:4).

3. The Specification also describes the following:
Alternatively, the electronic intermediary can connect
electronically with the IRS, and receive the tax data from the IRS. In
this alternative embodiment, the tax data providers have already
provided the tax data to the IRS and the electronic intermediary
obtains the tax data from the IRS, and not the tax data providers.
Further, the electronic intermediary can connect electronically with
other taxing authorities possessing the taxpayer’s tax data. In this
case, the electronic intermediary receives the tax data from the taxing
authorities instead of the tax data providers. (Spec. 13:6-12).

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4. The Examiner found that Beamer describes connecting
electronically an electronic intermediary to a tax data provider and collecting
electronically tax data from the tax data provider (e.g., Ans. 9-10).
5. Specifically, the Examiner found with respect to independent
claims 21, 29, 37, 45, 53, and 61 (directing attention to Beamer ¶¶ 3, 4, 6,
15, 16, 23, and 26) that:
The tax preparation software, e.g., MacInTax, can electronically
connect to and download relevant financial information from a
bank via a home accounting program, e.g., Dollars & Sense.
This downloaded information is used to assist in completing
one’s tax return. (e.g., Ans. 10).

6. ¶ 3 of Beamer describes:
One day in the not-too-distant future Jan and Jim
Smithwick will have their employers transmit their salaries
electronically directly into their personal bank accounts. They
will be able to download their bank records into their personal
financial software. That program can lien pass the information
to a tax preparation program.

7. Moneyline, the program that allows electronic access to a bank is
described as follows:
Moneyline allows you to communicate directly with your bank’s
computer system. Many transactions can be directly fed by the bank’s
computer into Dollar & Sense accounts. This reduces the drudgery of
retyping data, increases accuracy and gives convenient access to bank
information at any time, not just when the statement arrives. (Beamer
¶ 26).

8. Beamer describes Dollars & Sense as a home accounting program
that keeps track of personal finances (¶¶ 1 and 6).

9. Beamer also describes the following with respect to home
accounting software programs:
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Grooming your files at the end of the year is a must. If your
accounts balance at the end of the year, you are in pretty good shape
but transactions can still be in the wrong categories. At tax time it is
necessary to review all transactions one by one, making sure that each
is in the correct category and correctly marked as taxable or
nontaxable. It is best to empty out the “Misc.” and “Cash” accounts
as much as possible.
Hopefully, before tax time rolls around you will have been
practicing with report templates all year. This is the most difficult
part of using these programs, especially with MacMoney, because
there are so many variables to deal with. You must make a year end
report that will correctly summarize the tax data from your files. If
you have been using the suggested tax accounts from the program,
this shouldn’t be too hard (Beamer ¶¶ 36 and 37).

10. The Simplification Specification gives examples of the type of
data that is considered “tax data” as follows:
This information [data needed to compute the tax payer’s liability]
includes: IRS Forms W-2 from their employers; IRS Forms 1099 from
their banks; each mutual fund in which interests are held, each broker
in respect of dividends, interest and gross brokerage proceeds, and
other persons from whom payments are received; IRS Forms 1098 in
respect of residential mortgage interest paid; and canceled checks or
other acknowledgments from charitable organizations (Spec. 4:15-19).

B. Principles of Law
35 U.S.C. § 112, ¶ 1
Adequate written description means that, in the Specification, the
applicant must “convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the [claimed]
invention.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991). The written description requirement is separate and distinct from the
enablement requirement. Id.
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35 U.S.C. § 112, ¶ 2
If the scope of the invention sought to be patented cannot be determined
from the language of the claims, the Specification or the teachings of the
prior art with a reasonable degree of certainty, a rejection of the claims
under 35 U.S.C. § 112, second paragraph is appropriate. In re Wiggins, 488
F.2d 538, 541 (CCPA 1973).
35 U.S.C. § 102
“Anticipation under 35 U.S.C. § 102(b) requires that ‘each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.’” In re Robertson, 169 F.3d. 743,
745 (Fed. Cir. 1999) (citation omitted).
C. Analysis
The 112, ¶¶ 1 and 2 rejections
We first address the arguments made in the context of the written
description requirement. The Examiner found that it is not clear how the
step of “collecting electronically tax data from a tax data provider,” recited
in independent claims 21, 29, 37, 45, 53, and 61, is performed. Ans. 4. The
Specification describes that once the tax payer provides account or
identification data to the intermediary, the intermediary then may
electronically search databases for the tax payer’s tax data (Specification
10:3-6), or the electronic intermediary may electronically contact and collect
from the tax data providers the tax payer’s tax data (Specification 10:6-9).
Moreover, as pointed out by Simplification, the Specification describes
examples of how the intermediary is electronically connected to a tax data
provider. App. Br. 13-14; Spec. 12:17-13:1. The Examiner has failed to
clearly articulate why such descriptions fail to convey to one of ordinary
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skill in the art that the inventor had possession of electronic collection of tax
data.
The Examiner also found that since the Specification describes that
the invention may be implemented using existing software, such as
TurboTax®, that the demarcation between one off-the-shelf software
program being integrated into another piece of software is not made clear by
the Specification. Ans. 23.
The Examiner’s position is not persuasive. The Specification states
that “step 13 can be implemented using a computer program similar to the
computer programs currently available in the market place” such as
TurboTax®. Spec. 13:18-21. The Specification makes clear that the
software may be similar to what is available in the market place, but need
not be exactly the same software.
The Examiner found that tax data corresponding “to at least one item
of tax liability reported on an at least one of an Internal Revenue Service
(“IRS”) form, a state form, a local form, and a foreign tax form” as recited in
claims 24-26, 32-34, 40-42, 48-50, 56-58 and 64-68 is not supported by the
Specification. The Examiner poses several hypothetical questions regarding
the limitation, such as: 1) do the claims require that the tax data expressly be
reported and, if so, to whom; 2) if the scope of the claims necessitates an
active reporting of the tax data on one of the recited forms, what is the extent
of the data reported; 3) does the invention report the actual image data or an
OCR version of the contents of an entire IRS tax form; and 4) is the tax data
limited to data values printed on a tax form or merely related to other
information that is printed on a tax form? Ans. 5-6.
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The questions do not contribute to a reasoned articulated explanation
of why the Examiner finds that the inventor did not have possession of the
claimed feature. The Specification appears to support the limitation. For
example, the Specification describes that the electronic intermediary can
connect electronically with the IRS and receive tax data from the IRS. That
tax data is data that various tax data providers provide to the IRS (FF 3).
The Examiner has failed to clearly articulate why the Specification fails to
convey that the inventor had possession of this claimed feature.
In response to Simplification’s arguments, the Examiner apparently
agrees that the Specification does provide written description support for the
“collecting electronically tax data from a tax data provider,” but argues that
the Specification fails to explain in detail how this is accomplished. Ans.
17.
Whether one of ordinary skill in the art can make or use a described
invention, e.g., enablement, is a separate and distinct requirement of
35 U.S.C. § 112, ¶ 1. The test for enablement is based on undue
experimentation, where several underlying factual findings need be made.
The Examiner has failed to make any such findings. We need not and will
not speculate as to how the Examiner’s rejections may possibly fit into an
enablement scenario. The Examiner has the initial burden to succinctly
articulate a rationale for rejecting the claims.
The Examiner’s rejection based on the second paragraph of 35 U.S.C.
§ 112 is verbatim the same as the written description rejection. In the
context of 35 U.S.C. § 112, second paragraph, the Examiner has failed to
explain why the scope of the invention sought to be patented cannot be
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determined from the language of the claims, the Specification or the
teachings of the prior art with a reasonable degree of certainty.
As already discussed above, at the heart of the Examiner’s rejections
is that the Specification does not provide enough information such that one
of ordinary skill in the art would be able to make or use the invention. The
Examiner has failed to make the requisite findings to support the assertions
made, e.g., that one of ordinary skill in the art would not know how to make
or use the invention without undue experimentation.
In addition to the above, and with respect to claims 24-26, 32-34, 40-
42, 48-50, 56-58 and 64-68, we cannot sustain the rejection for the following
reasons. Claims 24, 32, 40, 48, 56 and 64 recite “collecting automatically
and electronically tax data from said tax data provider” “wherein said
taxpayer specific tax data corresponds to at least one item of tax liability
reported on at least one of an Internal Revenue Service (“IRS”), a state form,
a local form, and a foreign tax form.” The Examiner argues that the claim
language is indefinite since the claim could properly be interpreted as
requiring active reporting.
Specifically, the Examiner asks whether the tax data is reported, and if
so, by whom. Ans. 7. We disagree with the Examiner that the claim may be
properly interpreted to require active reporting of tax data to anyone.
Simplification argues, and we agree, that the limitation “wherein said
taxpayer specific tax data corresponds to at least one item of tax liability
reported on at least one of an Internal Revenue Service (“IRS”), a state form,
a local form, and a foreign tax form” is merely descriptive of the type of tax
data that is collected (App.Br. 16). Reported tax data is just data appearing
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on a tax form. The claim does not require active reporting of the data as
argued by the Examiner.
Our interpretation is supported by the description in the Specification
(FF 3). It also does not matter who had placed the data on an IRS, state,
local, or foreign tax form such that such data can then be collected as
“reported.” The Examiner failed to rebut Simplification’s argument in this
regard, and therefore, the rejection of the claims 24-26, 32-34, 40-42, 48-50,
56-58 and 64-68, under 35 U.S.C. 112, ¶ 2 is also without merit.
Rejection of claims 21, 22, 24, 29, 30, 32, 37, 38, 40, 45, 46, 48, 53, 54, 56,
61, 62 and 64 as anticipated by Beamer

The Examiner finally rejected all of the independent claims as being
anticipated under 35 U.S.C. § 102(b) by Beamer and further supported by
the disclosure of “It’s W-2 Time.” The claims in this group stand or fall
together. Claim 21 is representative and recites “collecting electronically tax
data from said tax data provider.” The Examiner found that Beamer
describes a tax data provider, e.g., the bank, from which tax data is collected
electronically. Ans. 9-10.
An issue raised by Simplification is whether Beamer describes that the
information collected from the bank is “tax data.” App. Br. 38-41. For the
reasons that follow, the Examiner has failed to sufficiently establish that
Beamer describes that the information collected from the bank is “tax data,”
and therefore the rejection of all of the claims 21-68 is reversed.
In reviewing both the Examiner’s and Simplification’s arguments, it
appears that both agree that “tax data” is data that is used to determine an
individual’s liability (Ans. 10-11 and App. Br. 39), which is consistent with
the Specification description of tax data. The specification describes
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examples of “tax data” as IRS Forms W-2 from their employers and IRS
Forms 1099 from their banks (FF 10). Simplification disagrees that Beamer
describes that the information obtained from the bank is data that is used to
determine an individual’s liability.
Simplification argues that the information obtained from the bank, is
described as “salary data” and that “salary data” does not indicate the net
pay of the customer, which is necessary to determine the customer’s taxable
income. App. Br. 39. Specifically, Simplification argues that the Beamer
bank record indicates the salary of the customer. Simplification further
argues that the bank record salary entry is the net pay of the customer, and
that the salary entry data would not include the customer’s taxable income,
or tax liability. App. Br. 39.
We understand Simplification as arguing that the information contained
on a bank statement as described in Beamer would show a record of the
amount of money directly deposited into a customer’s account, which
Simplification refers to as “salary data.” We further understand
Simplification as arguing that a monthly bank record showing the amount of
money directly deposited would not be “tax data” since one could not
determine the taxable income from the data showing the amount deposited.
Instead, Simplification maintains that Beamer’s direct deposit information is
not useful information for determining an individual’s liability.
In support of the argument, Simplification directs attention to paragraph
3 of Beamer. That passage reads as follows:
One day in the not-too-distant future Jan and Jim
Smithwick will have their employers transmit their salaries
electronically directly into their personal bank accounts. They
will be able to download their bank records into their personal
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financial software. That program can lien pass the information
to a tax preparation program.

This passage tends to support Simplification’s argument that the only
type of data that is specifically described is “salary” information, or the
amount of money directly deposited into the customer’s bank account from
an employer. From the above passage, one would understand that what an
employer is electronically directly transmitting to the Smithwick’s bank
accounts is the amount of money owed to them from their employer. Such
direct deposits are typically made on a weekly, bi-weekly or monthly basis.
That amount would be after all tax deductions, retirement deductions, social
security deductions, and any other deductions are made.
There is no indication from the above passage that the amount deposited
directly into the Smithwick’s accounts is the type of data that is typically
used to determine one’s tax liability. For example, a monthly bank report
showing direct deposits from an employer is a snap shot of what occurred in
a given month and would not be a complete accurate summary of a
taxpayer’s total net income for a year, information that would be found on a
W-2 form, e.g., the type of data that the Specification describes as being “tax
data.” Even if the direct deposit salary amount on a bank statement is
assumed to be passed to a tax preparation program that does not turn it into
“tax data” without any demonstration that the tax preparation software
indeed uses that data to determine one’s tax liability.
The Examiner’s response is not sufficient to refute the Applicants’
arguments. The Examiner is silent with respect to Simplification’s specific
argument that Beamer describes a monthly bank statement that would only
include a direct deposit amount from an employer, and that such information
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would not be enough or helpful to determine an individual’s tax liability.
Instead, the Examiner merely repeats what was stated in the rejection, e.g.,
that Beamer ultimately utilizes the downloaded bank statement information
to electronically prepare a tax return. However, the Examiner has failed to
direct attention to where in Beamer that the conclusion finds support, or
explain how Beamer necessarily or inherently describes the feature. Such a
conclusory response is not sufficient to overcome the argument made by
Simplification and what Beamer describes in paragraph 3.
The Examiner argues that:
Completion of an IRS tax form is expressly disclosed by
Beamer; therefore, by using data downloaded from a bank to
complete the IRS tax form, said data qualifies as tax data since
it provides information that is required to complete one’s tax
return. Ans. 25.

The Examiner has failed to show that Beamer contemplates “using
data downloaded from a bank to complete the IRS tax form” as argued. The
Examiner places much emphasis on the following passage in Beamer to
support the assertion that Beamer describes “tax data” e.g., data that can be
used to complete a tax form.
Moneyline allows you to communicate directly with your
bank’s computer system. Many transactions can be directly fed
by the bank’s computer into Dollar & Sense accounts. This
reduces the drudgery of retyping data, increases accuracy and
gives convenient access to bank information at any time, not
just when the statement arrives. (Beamer ¶26).

The references to “bank records” and “statement” from the above passage
are not specific as to the type of data that is contained on the bank record or
statement. The only reference to the type of data that may be contained on
the record or statement is that of the money that is deposited into the
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Smithwick’s bank account from their employer as previously discussed. The
Examiner has also failed to demonstrate that the data collected from the
bank must necessarily or inherently be tax data as argued.
Beamer focuses on tax preparation. However, Beamer also focuses in
detail on home accounting software too. There is approximately a full page
of the three page article describing the general advantages of using a home
accounting software program. Within that description is the above
paragraph that discusses the link between Moneyline and a home accounting
software program. The downloaded bank information is to the home
accounting or personal financial software, not directly to the MacInTax or
tax software.
As described in Beamer, home accounting software such as the Dollars &
Sense software tracks data that is otherwise not relevant to a tax payer’s tax
liability. For example, direct deposit data, e.g., the amount of money that is
deposited from an employer into an employee’s bank account may be useful
in the context of home accounting software, for the purpose of budgeting
and paying one’s bills, but is not the type of data that a tax payer uses to
determine tax liability as already discussed. The home accounting software
of Beamer tracks data that would appear to have nothing to do with a tax
payer’s tax liability.
For example, Beamer describes manipulating the home accounting
software files in preparation for determining tax liability. Beamer states that
“[a]t tax time it is necessary to review all transactions one by one, making
sure that each is in the correct category and correctly marked as taxable or
nontaxable” (FF 9). That statement supports the notion that data collected
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through the home accounting software such as Dollars & Sense is not
limited to tax data.
Here, the Examiner has failed to sufficiently demonstrate that the data
obtained from the bank is anything more than information that a taxpayer
would use for household budgeting purposes, which data the Examiner has
failed to demonstrate would in fact be used to determine a tax payer’s tax
liability.
For all of these reasons, the Examiner’s determination that the data
collected from the bank must necessarily or inherently be data that is used to
process a tax payer’s liability is not supported by record evidence.
For all of these reasons, we will not sustain the Examiner’s rejection of
the claims 21, 22, 24, 29, 30, 32, 37, 38, 40, 45, 46, 48, 53, 54, 56, 61, 62
and 64 as anticipated based on the prior art of record.
Rejection of claims 23, 25-28, 31, 33-36, 39, 41-44, 47, 49-52, 55, 57-60,
63, and 65-68 as obvious over Beamer and “It’s W-2 Time”

Claims 23, 25-28, 31, 33-36, 39, 41-44, 47, 49-52, 55, 57-60, 63, and 65-
68 are dependent on, and include all the limitations of, independent claims
21, 29, 37, 45, 53, and 61. App. Br. 48-57. As applied by the Examiner,
neither “It’s W-2 Time” nor the “Official Notice” taken by the Examiner
make up for the deficiencies of Beamer. We find that the Examiner erred in
determining that claims 23, 25-28, 31, 33-36, 39, 41-44, 47, 49-52, 55, 57-
60, 63, and 65-68 are obvious over Beamer, “It’s W-2 Time” and “Official
Notice.”
D. Decision
Upon consideration of the appeal, and for the reasons given herein, it is
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ORDERED that the decision of the Examiner rejecting claims 21-68
under 35 U.S.C. § 112, first paragraph is reversed.
ORDERED that the decision of the Examiner rejecting claims 21-68
under 35 U.S.C. § 112, second paragraph is reversed.
ORDERED that the decision of the Examiner rejecting claims 21, 22, 24,
29, 30, 32, 37, 38, 40, 45, 46, 48, 53, 54, 56, 61, 62 and 64 under 35 U.S.C.
§ 102(b) as anticipated by Beamer is reversed.
ORDERED that the decision of the Examiner rejecting claims 23, 25-28,
31, 33-36, 39, 41-44, 47, 49-52, 55, 57-60, 63, and 65-68 as unpatentable
under 35 U.S.C. § 103(a) over Beamer, “It’s W-2 Time” and “Official
Notice” is reversed.

REVERSED

ack

cc:

VENABLE LLP
P.O. BOX 34385
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UNITED STATES