Ex Parte Pavlou et al

Patent Trial and Appeal Board

Feb 27, 2017

11701226 (P.T.A.B. Feb. 27, 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.
11/701,226 02/01/2007 Pavlos T. Pavlou PTP10001USU 6843
29471 7590 03/01/2017
MCCU ACKFN fr FR ANK T T C
EXAMINER
P.O. Box 787 GLASS, RUSSELL S
Elmhurst, IL 60126
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
docket @ mccrackenfrank. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAVLOS T. PAVLOU and NICHOLAS M. MAVROS
Appeal 2015-0040331
Application 11/701,2262
Technology Center 3600
Before PHILIP J. HOFFMANN, TARA L. HUTCHINGS, and
SHEILA F. McSHANE, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 2—23. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellants, the invention relates to a method and a
“system for calculating and preparing all state and local sales and use tax
1 Our decision references Appellants’ Specification (“Spec.,” filed Feb. 1,
2007), Appeal Brief (“Appeal Br.,” filed Aug. 19, 2014), and Reply Brief
(“Reply Br.,” filed Jan. 30, 2015), as well as the Examiner’s Answer
(“Answer,” mailed Dec. 1, 2014).
2 According to Appellants, Pavlou Tax Solutions, LLC, is the real party in
interest. Appeal Br. 2.
Appeal 2015-004033
Application 11/701,226
returns that are applicable for the locations where the taxpayer does
business[,] which greatly facilitates preparation.” Spec. 12. Claims 2
and 13 are the only independent claims on appeal. Appeal Br., Claims App.
We reproduce independent claim 2, below, as illustrative of the claims on
appeal.
2. A computer-implemented method of automatically
preparing tax returns of a taxable entity comprising:
receiving by a computer tax information associated with
the taxable entity, wherein the tax information includes
information regarding a location and a transaction associated
with the taxable entity;
automatically determining by the computer a plurality of
taxing authorities associated with the location and the
transaction;
automatically determining by the computer multi-level tax
rates associated with the plurality of taxing authorities based on
the received tax information;
automatically calculating by the computer one or more tax
amounts based on the received tax information and the multi­
level tax rates;
automatically determining by the computer multi-level tax
return information based on the received tax information and the
one or more calculated tax amounts; and
transmitting over a computer network the multi-level tax
return information to a computer system associated with one of
the plurality of taxing authorities associated with the multi-level
tax return information.
Id.
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Appeal 2015-004033
Application 11/701,226
REJECTIONS AND PRIOR ART3’4
The Examiner rejects claims 2—23 under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
The Examiner rejects claims 2—23 under 35 U.S.C. § 102(b) as
anticipated by Von Drehnen (US 2004/0002906 Al, pub. Jan. 1, 2004).
Answer 3—7.
ANALYSIS
101 rejection
We base our determination as to whether a claim is directed to patent-
eligible subject matter on the Supreme Court’s framework as articulated in
Alice Corp. v. CLS Bank Inti, 134 S.Ct. 2347 (2014), which follows the
two-part test set forth in Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S.Ct. 1289, 1293 (2012). A claim fails to recite patent-eligible
subject matter if, in accordance with the first part of the Alice test, the claim
is directed to an abstract idea, and if, in accordance with the second part of
the test, the claim lacks any further claim limitations that, when
“consider[ed] . . . both individually and ‘as an ordered combination[]’ . . .
‘transform the nature of the claim’ into a patent-eligible application.” Alice,
134 S.Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297). In this case, we
determine that the Examiner fails to establish that the features of any claim,
when considered as an ordered combination, fail to transform the claim as
required by Alice test.
3 The Examiner withdraws enablement and indefiniteness rejections made
in the Office Action mailed December 20, 2013. Answer 7.
4 Although both outstanding rejections purport to reject claim 1, claim 1 is
not pending. See, e.g., Appeal Br., Claims App.
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Appeal 2015-004033
Application 11/701,226
Specifically, in the Answer, the Examiner summarily states that
[t]he additional element(s) or combination of elements in the
claim(s) other than the abstract idea per se amount(s) to no more
than mere instructions for implementing the abstract idea on a
generic computer. Viewed as a whole, these additional claim
element(s) do not provide meaningful limitation(s) to transform
the abstract idea into a patent eligible application of the abstract
idea such that the claim(s) amounts to significantly more than the
abstract idea itself.
Answer 2—A. We determine that this statement does not address sufficiently
the actual limitations of any claim. For example, this statement does not
establish the basis on which the Examiner determines that the claimed is a
generic computer. Further, this statement does not establish that, even if the
claimed computer is a generic computer, other limitations in the claim are
insufficient to transform the claim as required by the second step of the Alice
test. Still further, although Appellants essentially argue that the computer
network recited in claim 1, for example, transforms the claim, the Examiner
does not address this argument, or otherwise explain why the recitation of a
computer network is insufficient to transform the claim. Appeal Br. 10.
Thus, based on the foregoing, we determine that the Examiner fails to
establish that the features of any claim, when considered as an ordered
combination, fail to transform the claim as required by Alice test, and,
therefore, do not sustain the Examiner’s rejection of claims 2—23 under 35
U.S.C. § 101.
102 rejection
Independent claim 2 recites, among other features, “automatically
determining by the computer a plurality of taxing authorities associated with
[a] location and [a] transaction [of a taxable entity].” Appeal Br., Claims
App. Appellants argue that rejection is in error because, among other
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Appeal 2015-004033
Application 11/701,226
reasons, Von Drehnen fails to disclose this limitation. See, e.g., Appeal
Br. 11—13; see also, e.g., Reply Br. 4. The Examiner relies on Von
Drehnen’s Figure 6 and paragraph 70 to disclose the argued limitation. See.
e.g., Final Act. 4—5; Answer 4—7. Based on our review of the cited portions
of Von Drehnen, we conclude that the Examiner fails to adequately support
the finding that paragraph 70 and/or Figure 6 discloses determining a
plurality of taxing authorities associated with a taxable entity. For example,
although each of Figure 6 and paragraph 70 appears to indicate that buyer
and seller locations are used to determine which tax is applicable to a sale, it
is not clear to us, and the Examiner does not explain, how this is a
determination of which taxing authority is associated with the taxable entity.
Further, to the extent that these portions of Van Drehnen are understood to
teach determining which taxing authority is associated with the taxable
entity, the claim requires the determination of “a plurality” of taxing
authorities, which also does not appear to be taught by the identified portions
of Van Drehnen. See Van Drehnen 170 (“[T]he tax due amount is
remitted ... to the tax collection agency.” (Emphasis added.)); see also
Appeal Br., Claims App.
Thus, based on the foregoing, we do not sustain the rejection of
claim 2, or of its dependent claims 3—12. Further, inasmuch as independent
claim 13 recites a similar feature, we do not sustain the rejection of claim 13
or of its dependent claims 14—23.
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Appeal 2015-004033
Application 11/701,226
DECISION
We REVERSE the Examiner’s subject matter and anticipation
rejections of claims 2—23.
REVERSED
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