Ex Parte Pai et al

Patent Trial and Appeal Board

Aug 27, 2018

13744108 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/744,108
57956 7590
FBFK/Intuit
Robert Lord
9 Greenway Plaza
Suite 500
FILING DATE
01/17/2013
08/29/2018
HOUSTON, TX 77046
FIRST NAMED INVENTOR
Yogish Pai
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.
37202/509001; 126650 8005
EXAMINER
OJIAKU, CHIKAODINAKA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
08/29/2018 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):
rlord@fbfk.law
jhathaway@fbfk.law
docketing@fbfk.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOGI SH PAI, ANIL SHARMA,
SHIRISH KISHORE PESHWE, ANSHU VERMA, and
RICHARD ERNEST BLITZ
Appeal2017-005730
Application 13/744,108 1
Technology Center 3600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
Per Curiam.
DECISION ON APPEAL
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-29, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 According to Appellants, the real party in interest is Intuit Inc. App. Br. 4.
2 Our Decision refers to Appellants' Appeal Brief filed June 28, 2016 ("App.
Br."); Appellants' Reply Brief filed February 24, 2017 ("Reply Br."); the
Examiner's Answer mailed December 30, 2016 ("Ans."); and the Final
Office Action mailed February 1, 2016 ("Final Act.").
Appeal2017-005730
Application 13/7 44,108
STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 15, and 29 are independent claims. Claim 1 is reproduced
below:
1. A method for configuring a software application
for a geographical region, comprising:
obtaining, over the Internet, a plurality of tax structures
comprising a first tax structure and a second tax structure that
are generated by a plurality of users according to a tax
jurisdiction requirement of the geographical region,
wherein the first tax structure comprises a plurality of tax
rates that sum to a total tax rate and a first plurality of user
defined tax labels for the plurality of tax rates,
wherein the second tax structure comprises the plurality
of tax rates that sum to the total tax rate and a second plurality
of user defined tax labels for the plurality of tax rates,
wherein each of the plurality of tax structures comprises
a tax rate that is used by the plurality of users to configure a
plurality of instantiations of the software application for
performing a pre-determined task, and
wherein performing the pre-determined task within the
geographical region comprises at least calculating a tax amount
based on the tax rate;
generating, by a computer processor, a statistical measure
of the plurality of users performing the pre-determined task;
generating, by the computer processor and in response to
the statistical measure exceeding a pre-determined threshold, a
suggested tax structure comprising:
the plurality of tax rates; and
a plurality of system defined tax labels, for the plurality
of tax rates, that are generated based on the first plurality of
user defined tax labels and the second plurality of user defined
tax labels using semantic analysis;
2
Appeal2017-005730
Application 13/7 44,108
sending, over the Internet and in response to at least
determining that a new user of the software application is
within the geographical region, the suggested tax structure for
presentation to the new user; and
configuring, using the suggested tax structure and for the
new user, a new instantiation of the software application for
performing the pre-determined task within the geographical
reg10n.
Cerrato
Anderson
Demant
References
US 2002/0178257 Al
US 2005/0102283 Al
US 2010/0058169 Al
Examiner's Rejections
Nov. 28, 2002
May 12, 2005
Mar. 4, 2010
Claims 1-29 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 16-17.
Claims 1-29 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Demant, Cerrato, and Anderson. Id. at 18---68.
Claims 1-29 stand rejected under 35 U.S.C. § I03(a) in view of
Leahy-Smith America Invents Act (AIA) § 14. Id. at 68---69.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellants. Arguments not made are waived. See
MPEP § 1205.02 (9th Ed., Rev. 08.2017 (Jan. 2018)); 37 C.F.R.
§§ 4I.37(c)(l)(iv) and 4I.39(a)(l).
ANALYSIS
35 us.c. § 101
The Examiner concluded claims 1-29 are directed to patent-ineligible
subject matter. Final Act. 16-17. We agree with the Examiner.
3
Appeal2017-005730
Application 13/7 44,108
In Alice, the Supreme Court set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 77 (2012)). The first step in the analysis is to "determine whether
the claims at issue are directed to one of those patent-ineligible concepts."
Id. If so, the second step is to consider the elements of the claims
"individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 566 U.S. at 79, 78). In other words, the
second step is to "search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Id. (alteration in original) (quoting Mayo, 566 U.S. at 72-
73).
First Step
As an initial matter, we observe that independent claims 1, 15, and 29
respectively recite a method, a system, and a non-transitory computer
readable medium. As such, the claims are directed to statutory classes of
invention within 35 U.S.C. § 101.
Turning to the first step of the Alice analysis, we agree with the
Examiner that the claims are directed to "an abstract idea" for "identifying
the applicable taxes for a business entity" and "recommend[ing] ... a tax
structure to a business" (Ans. 2) by using a combination of abstract-idea
4
Appeal2017-005730
Application 13/7 44,108
processes including "concepts relate[ d] to data storage and exchange in
which different types of data are accessed and transmitted between
transacting parties or devices" (id. at 3). The Examiner determines the
"claimed invention is similar to" previously determined abstract-idea
processes of "organizing information[,] ... processing information[,] .. .
collecting data, recognizing certain data within the collected data set, .. .
storing that recognized data in memory[,] ... and using categories to
organize, store and transmit information." Final Act. 3.
Appellants' argument that the Examiner's determination "improperly
ignore[ s] ... explicitly recited details [in the claims] and genericize[ s] the
claim[s]" (App. Br. 10) is not persuasive. In particular, Appellants
emphasize that the claimed "suggested tax structure itself is generated based
on existing tax structures obtained over the Internet" that are "used to
configure existing instantiations of the software application" with
semantically analyzed "tax labels." Id. Those features, however, are
directed to the Examiner-identified abstract concepts of collecting,
analyzing, and storing data. Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
( discussing "the abstract idea of 1) collecting data, 2) recognizing certain
data within the collected data set, and 3) storing that recognized data in a
memory"); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-
1354 (Fed. Cir. 2016) (determining that claims focused "on collecting
information, analyzing it, and displaying certain results of the collection and
analysis" are "directed to an abstract idea"). Furthermore, that the type of
data being collected, analyzed, and stored is limited to tax-specific data does
not change the abstract nature of the claimed abstract processes. Elec.
5
Appeal2017-005730
Application 13/7 44,108
Power, 830 F.3d at 1353 ("treat[ing] collecting information, including when
limited to particular content (which does not change its character as
information), as within the realm of abstract ideas") ( citations omitted).
Further, Appellants' argument that, rather than an abstract idea, the
claims describe "an improvement in computer-related technology" because
the claims "configur[ e] a new instantiation of the software application for
the geographical region using [a] suggested tax structure" (App. Br. 11) is
not persuasive. The Specification describes that the "configuration" of
software is provided by storing tax rate and tax label data in corresponding
tax data structure fields. Spec. ,r,r 14 ("a tax structure ( e.g., tax structure A
(105c)) stor[ es] a tax rate (e.g., tax rate A (105d) )"), 20 ("example tax
structure A (150) includes a hierarchical graph of tax rate nodes each having
a user defined tax label and a corresponding numerical tax rate"), 62 ("the
user interface menu allows the new user to configure the tax structure"), 63
("the new user may select to adopt a system suggested tax structure"); see id.
Fig. 3A. Our reviewing court has held that the storage of data in data fields
is within the realm of abstract ideas. Content Extraction, 776 F.3d at 1345,
134 7 ( determining that a claim reciting "storing information from said
portions of said hard copy documents corresponding to said first data field"
is directed to an abstract idea).
Even further, the "configuration" of the software is an "automation of
manual processes" that "does not constitute a patentable improvement in
computer technology." Credit Acceptance Corp. v. Westlake Servs., 859
F.3d 1044, 1055 (Fed. Cir. 2017). The Specification teaches that the
configuration of the software application can be performed by the user.
Spec. ,r,r 17 ("each of the tax structures ( e.g., tax structure A (105c)) is
6
Appeal2017-005730
Application 13/7 44,108
created and/ or used by one or more users (e.g., user group ( 101)) to
configure a corresponding instantiation of the software application"), 27
("the suggested tax structure ( 141) can be used by the user N ( 101 n) to
configure a respective instantiation of the software application"), 62 ("the
user to enter tax rate information"), Fig. 3A. Automating that manual data
entry process by inputting tax data into corresponding tax data fields to
configure tax software "rel[ies] on a computer to perform routine tasks more
quickly or more accurately" and "is insufficient to render a claim patent
eligible." OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed.
Cir. 2015) ( citing Alice, 134 S. Ct. at 2359); Credit Acceptance, 859 F .3d at
1055 (noting that "automation of manual processes using generic computers
does not constitute a patentable improvement in computer technology").
Second Step
Turning to the second step of the Alice analysis, we further agree with
the Examiner that the claims fail to transform the abstract idea into a patent-
eligible invention. Final Act. 16-17. In particular, we agree with the
Examiner's determinations that the claims "do not add meaningful
limitations to the [abstract] idea" (Final Act. 17) and that "[ e Jach [ recited]
step does no more than require a generic computer to perform generic
computer functions" (Ans. 5). That is, "the claims, when considered as a
whole, are nothing more than the instruction to implement the abstract idea
in a particular, albeit well-understood, routine and conventional
technological environment." Ans. 6.
Appellants' argument that the claims "are too specialized and
complex to be considered 'generic computer functions"' (App. Br. 12) is not
7
Appeal2017-005730
Application 13/7 44,108
persuasive. As discussed supra, the claims recite steps of analyzing data to
generate data and then storing that generated data to configure software.
But, "[ n ]early every computer" provides "basic calculation [ and] storage"
functions. Alice, 134 S. Ct. at 2360. Indeed, the Specification teaches "the
invention may be implemented on virtually any type of computer regardless
of the platform being used." Spec. ,r 73. Furthermore, the claimed
"generation of system defined labels" and "configuration of a new
instantiation of software" broadly recite results, but, beyond the generic use
of data to arrive at the results, the claims do not recite any particular manner
to achieve those results that would require unconventional computing
technology. Elec. Power, 830 F.3d at 1356 (noting that "essentially result-
focused, functional character of claim language has been a frequent feature
of claims held ineligible under § 101 ").
Further, Appellants' argument that the claims recite significantly more
than an abstract idea because the claimed "inventive concept is an
improvement to the technical field of software suggested installation and
configuration parameters" (App. Br. 13; Reply Br. 6) is not persuasive. As
discussed supra, the "configuration" of software amounts to the storage of
certain data, i.e., tax rate data and tax label data are input and stored in tax
rate data fields and tax label data fields. Spec. Figs. 3A, 3D, see id. ,r,r 14,
62---63, 71. But limiting the abstract-idea process of storing data to a
particular type of data is "insufficient to save a claim." See Content
Extraction, 776 F.3d at 1348 ( citing Alice, 134 S. Ct. at 2358). Furthermore,
as discussed supra, the "configuration" of software at best automates an
available manual process of configuring the software, i.e., the user is saved
from manually inputting configuration parameters. Spec. ,r,r 62-63, Fig. 3A.
8
Appeal2017-005730
Application 13/7 44,108
But, automating that manual configuration task "is insufficient to render a
claim patent eligible." OIP Techs., 788 F.3d at 1363 (citing Alice, 134 S. Ct.
at 2359).
Additionally, Appellants' argument that the claims "do[] not
monopolize the exception (i.e., abstract idea) and there is no risk that the
claims will 'tie-up' the excepted subject matter and pre-empt others" (App.
Br. 13) is not persuasive. Although preemption is characterized as a driving
concern for patent eligibility, preemption itself is not the test for patent
eligibility. Rather, "[ w ]hile 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). "Where a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework, as they
are in this case, preemption concerns are fully addressed and made moot."
Id.
Appellants have not proffered sufficient evidence or argument to
persuade us that any of the limitations in the remaining dependent claims
provide a meaningful limitation that transforms the claims into a patent-
eligible application. See App. Br. 8-13. Accordingly, Appellants have not
persuaded us claims 1-29 are directed to patent-eligible subject matter.
Therefore, we sustain the rejection of claims 1-29 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter.
9
Appeal2017-005730
Application 13/7 44,108
Anderson
35 US.C. § 103(a)
Appellants contend the Examiner erred in finding Anderson teaches
generating . . . a suggested tax structure comprising: the
plurality of tax rates; and a plurality of system defined tax labels,
for the plurality of tax rates, that are generated based on the first
plurality of user defined tax labels and the second plurality of
user defined tax labels using semantic analysis,
as recited in claim 1 and similarly recited in claims 15 and 29. App. Br. 14--
16; Reply Br. 7-8. Specifically, Appellants argue, "contrary to the
Examiner's contentions, Anderson fails to teach, at least, the above-
mentioned limitations." App. Br. 16.
We are persuaded. The Examiner relies on (Final Act. 21; Ans. 16)
Anderson's description of tax "categories: sales and use taxes, income and
franchise taxes, and property and miscellaneous taxes" (Anderson ,r 55) to
teach a "plurality of tax rates; and a plurality of system defined tax labels,
for the plurality of tax rates, that are generated." The Examiner, however,
has not shown where, or explained how, the tax rates and labels described by
Anderson's tax categories are "generated based on the first plurality of user
defined tax labels and the second plurality of user defined tax labels using
semantic analysis," as recited in claim 1. Instead, the Examiner gives that
limitation no patentable weight, determining that the claimed "generation
being based on some measure would be considered contextual and as
claimed does not appear to have any relevance or impact on the functionality
of the claimed step." Ans. 16. Although the claimed generation of tax
labels and tax rates broadly recites a result using data, the claim language at
least requires that the result is "based on" two different types of data - first
user defined tax label data and second user defined tax label data.
10
Appeal2017-005730
Application 13/7 44,108
Accordingly, because the Examiner does not explain how or show where
Anderson teaches the generated result is based on user defined tax label data
and does not conclude that such a generation is obvious, we do not sustain
the Examiner's 35 U.S.C. § 103(a) rejection of claims 1, 15, and 29 over
Demant, Cerrato, and Anderson.
Because we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants' other arguments
with respect to this rejection. See Reply Br. 7-8. Based on the foregoing,
we do not sustain the rejection of claims 2-14 and 16-28 under
35 U.S.C. § 103(a) over Demant, Cerrato, and Anderson.
AJA§ 14
The Examiner alternatively rejects claims 1-29 under
35 U.S.C. § 103(a) over AIA § 14. Final Act. 68---69. In particular, the
Examiner "interpret[ s] the claimed invention, in its entirety (i.e. each
limitation) as a strategy for reducing, avoiding, or deferring tax liability ('tax
strategy') pursuant to Section 14 of the Leahy-Smith America Invents Act"
and, so, determines that the "claim limitations are ... within the prior art."
Id.
Appellants argue, "Section 14 of the America Invents Act does not
apply to [the] claims" because the "Examiner even admits that 'the claimed
invention does not explicitly recite steps that relate to tax strategy"' and
because "the mere existence of tax rates does not equal a strategy for
reducing, avoiding, or deferring tax liability." App. Br. 16-17 (quoting
Final Act. 68).
11
Appeal2017-005730
Application 13/7 44,108
Section 14 of the Leahy-Smith America Invents Act states in part:
For purposes of evaluating an invention under section 102 or 103
of title 35, United States Code, any strategy for reducing,
avoiding, or deferring tax liability, whether known or unknown
at the time of the invention or application for patent, shall be
deemed insufficient to differentiate a claimed invention from the
prior art.
Leahy-Smith America Invents Act§ 14(a).
We are persuaded that the claims do not recite strategies for reducing,
avoiding, or deferring tax liability. Instead, the claims recite "generating ...
a suggested tax structure comprising: [a] plurality of tax rates; and a
plurality of system defined tax labels" to "configur[ e] ... [a] software
application for performing [a] pre-determined task." That is, the claims
suggest what tax rates and tax labels to use for software, rather than reciting
a scheme for reducing, avoiding, or deferring tax liability. Furthermore, the
Specification does not describe that the suggested tax rates and tax labels are
provided for tax reduction, avoidance, or deferral. Rather, the suggestion is
provided between different "tax labels that are semantically equivalent" but
have the same tax rate. Spec. ,r,r 51-53; see id. ,r,r 33-34, Fig. lB.
Accordingly, we do not agree with the Examiner's reliance on AIA § 14.
Because we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants' other arguments
with respect to this rejection. See App. Br. 17. Therefore, we do not sustain
the Examiner rejection of claims 1-29 under 35 U.S.C. § 103(a) in view of
AIA § 14.
12
Appeal2017-005730
Application 13/7 44,108
DECISION
We affirm the Examiner's decision rejecting claims 1-29 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter.
We reverse the Examiner's decision rejecting claims 1-29 under 35
U.S.C. § 103(a) as being unpatentable over Demant, Cerrato, and Anderson.
We reverse the Examiner's decision rejecting claims 1-29 under 35
U.S.C. § 103(a) in view of Leahy-Smith America Invents Act§ 14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
13