Ex Parte Swierz et al

Patent Trial and Appeal Board

Sep 19, 2018

12215198 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/215, 198 06/25/2008
79804 7590 09/21/2018
Duncan Galloway Egan Greenwald, PLLC
9750 Ormsby Station Road, Suite 210
Louisville, KY 40223
FIRST NAMED INVENTOR
N. Frank Swierz III
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.
113027.000014US1 4247
EXAMINER
GLASS, RUSSELLS
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
09/21/2018 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):
kduncan@dgeglaw.com
carnold@dgeglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte N. FRANK SWIERZ III, BRIAND. VROOM, and
JONATHAN A. BARON
Appeal2017-006013 1
Application 12/215,198
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-9, 13-21, 25-28,
and 32-36. We have jurisdiction to review the case under 35 U.S.C. §§ 134
and 6.
The invention relates generally to "systems that present for review
completed or partially completed electronic documents." Spec. ,r 1.
1 The Appellants identify Thomson Reuters Global Resources as the real
party in interest. Appeal Br. 1.
Appeal2017-006013
Application 12/215,198
Claim 1 is illustrative2 :
1. A web-based accounting software application adapted to be
used by a tax service provider for automatically transacting
delivery of fileable tax documents in exchange for payment for
services, the software application being associated with a
computer-based system operated by the tax service provider
compnsmg:
means for automatically generating, by a tax service
provider a preliminary tax document in a first format, the first
format incorporating an element adapted to deter filing the
preliminary tax document with a tax authority and otherwise
being substantially in a fileable format;
means for presenting, by the tax service provider, the
preliminary tax document to a user via web-based
communication;
means for the tax service provider receiving an approval
message, the approval message from the user indicating that the
preliminary tax document is approved;
means for automatically generating, by the tax service
provider, an invoice related to the preliminary tax document in
response to the received approval message;
means for automatically notifying, by the tax service
provider, the user of the invoice for payment, the notifying means
automatically generating an email to an address associated with
the user, wherein the email comprises one or more of an invoice
document, an embedded link to access an invoice document, and
an embedded link to a web page to facilitate payment;
means for determining, by the tax service provider,
payment has been made by receipt of an electronic
communication from a payment processing entity and
automatically storing in a transaction record payment
confirmation data related to the payment; and
means for automatically transforming, by the tax service
provider, the preliminary tax document into a final tax document
2 We herein refer to the Specification, filed Jun. 25, 2008 ("Spec."); Final
Office Action, mailed Feb. 29, 2016 ("Final Act."); Appeal Brief, filed
Aug. 1, 2016 ("Appeal Br."); Examiner's Answer, mailed Dec. 27, 2016
("Answer"); and the Reply Brief, filed Feb. 27, 2017 ("Reply Br.").
2
Appeal2017-006013
Application 12/215,198
in response to determining payment has been made, wherein the
final tax document is in a second format and is based at least in
part upon data associated with the preliminary tax document, the
second format excluding the element included in the first format,
the element having been automatically removed in response to
determining payment has been made, and being in a condition
for filing with a tax authority.
App. Br., Claims Appendix, 25.
The Examiner rejected claims 1-9, 13-21, 25-28, and 32-36 under
35 U.S.C. § 101 as directed to ineligible subject matter in the form of
abstract ideas.
We AFFIRM.
ANALYSIS
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
3
Appeal2017-006013
Application 12/215,198
petitioners' application explain the basic concept of hedging, or protecting
against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--595 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409
U.S. 63, 64 (1972) ("They claimed a method for converting binary-coded
decimal (BCD) numerals into pure binary numerals.").
The following method is then used to determine whether what the
claim is "directed to" is an abstract idea:
[T]he decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can
be seen-what prior cases were about, and which way they were
decided. See, e.g., Elec. Power Grp., 830 F.3d at 1353-54. That
is the classic common law methodology for creating law when a
single governing definitional context is not available. See
generally Karl N. Llewellyn, The Common Law Tradition:
Deciding Appeals (1960). This more flexible approach is also
the approach employed by the Supreme Court. See Alice, 134 S.
Ct. at 2355-57. We shall follow that approach here.
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016).
Examples of concepts that are patent ineligible subject matter include
fundamental economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S.
at 611; mathematical formulas, Flook, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. Examples of
concepts that are patent eligible subject matter include physical and
4
Appeal2017-006013
Application 12/215,198
chemical processes, such as curing rubber, Diamond, 450 U.S. at 184 n.7,
"tanning, dyeing, making waterproof cloth, vulcanizing India rubber,
smelting ores," and a process for manufacturing flour, Gottschalk, 409 U.S.
at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
The Appellants argue all claims together as a group. Appeal Br. 10.
We select claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds claim 1 is "directed to the abstract idea of
preparing a tax document that requires a payment for its preparation."
Answer 5; see also Final Act. 4.
Claim 1 recites steps for "generating, by a tax service provider a
preliminary tax document in a first format," presenting the document to a
user, receiving an approval message for the presented document, generating
and delivering an invoice, determining if payment was made, and if payment
was made, and "transforming, by the tax service provider, the preliminary
tax document into a final tax document in response to determining payment
has been made." These are typical steps for preparing a tax document for a
user where payment is desired before releasing a final version of the
document. Therefore, we agree with the Examiner that the concept to which
5
Appeal2017-006013
Application 12/215,198
the Examiner finds the claim is directed properly encompasses the scope of
the claim.
We are unpersuaded by the Appellants' argument that the claims are
not abstract, because none of our reviewing courts have yet identified
expressly the concept to which the claims are directed as being abstract.
Appeal Br. 13-15. Instead, the courts direct us to "examine earlier cases in
which a similar or parallel descriptive nature can be seen-what prior cases
were about, and which way they were decided." Amdocs, 841 F.3d at 1294.
To that end, the Examiner finds the claims are "a certain method of
organizing human activity similar to a component-based interface to handle
tasks during claim processing, which has been held to be an abstract idea."
Answer 5 ( citing Accenture Global Services, GmBH v. Guidewire Software,
728 F. 3d 1336 (Fed. Cir. 2013)). The Appellants advance no evidence or
argument that refutes the Examiner's finding.
We are not persuaded by the Appellants' argument that "providing a
document in a non-usable format for review prior to receiving approval and
payment form a user over an electronic platform and transforming the
document as claimed solves a problem specific to the computer field."
Appeal Br. 15-16; see also Reply Br. 2--4. The problem addressed by the
claims is described as "an increasing need for the service provider to secure
payment before delivering in final usable or fileable electronic document to
its clients," because "with electronic exchange of documents ... the service
provider loses some control over receipt of payment for their work product
or service provided." Spec. ,r 7. The increased problem, of a service
provider not getting paid after presenting an electronic version of a created
document to a customer, is, thus, not a new problem. Indeed, we discern
6
Appeal2017-006013
Application 12/215,198
that this is a common problem people have faced, such as professional
lawyers and accountants, for years, since before even the invention of
computers or communication of documents electronically over computer
networks. We are, therefore, unpersuaded that this is "a problem that is
specific to a computer and necessary for the information age relating to the
Internet." See Appeal Br. 16.
The Appellants next argue the steps of claim 1 could not be performed
by a human. Appeal Br. 16; see also id. 18 ("A human could not manage
generate or transform electronic documents, receive electronic notifications,
provide electronic messages, provide electronic notifications, store and
manage electronic data, or manage interactions over an electronic platform
as claimed"); Reply Br. 4. We are not persuaded by the Appellants'
arguments.
Claim 1 recites "means for automatically generating, by a tax service
provider a preliminary tax document in a first format." The Specification
describes that "[ o ]nee the tax and accounting forms have been created, the
service provider then uploads the prepared tax return to the online bill
payment interface, such as on a web-based portal service such as NetClient
CS. When uploading the file, the file should be converted into an image
form." Spec. ,r 11 (cited at Appeal Br. 2). The Specification also describes
"[ c ]lient Data 105 may be used to prepare any relevant form or document
106, such as a tax return, manually, or automatically and may involve using
tools to receive and format the data into the proper forms." Id. ,r 45. We
construe "automatically generating ... document in a first format" as an
output step, similar to printing.
Claim 1 also recites
7
Appeal2017-006013
Application 12/215,198
means for automatically transforming, by the tax service
provider, the preliminary tax document into a final tax document
in response to determining payment has been made, wherein the
final tax document is in a second format and is based at least in
part upon data associated with the preliminary tax document, the
second format excluding the element included in the first format,
the element having been automatically removed.
The Specification describes that "the service provider 108 may release the
financial documents in a format suitable for filing or submission or other
beneficial use by the client. For instance, any watermark included in the
preliminary, unfileable document is removed from the document." Id. ,r 56
( cited at Appeal Br. 3). We construe this step as a second output step, which
broadly may encompass printing a document with less content, such as
without a watermark.
We acknowledge that the Specification includes an example of
removing a watermark, which may not have no comparable action in a pen-
and-paper method. As written, however, the claim broadly includes other
options for this step that indicates that this example, when read in context,
effectively amount to merely outputting a document again without, for
example, the watermark. This is analogous to writing a form the first time
on a paper than includes the word "DRAFT" across the page, and writing the
form the second time on blank paper. Therefore, we are unpersuaded that
the claim is confined to steps for which there is no non-computer analogy.
The remainder of the claim recites steps that use the web and email
and other computer operations merely to communicate by making content
available to a user in a portal, sending or receiving emails, or
communicating other messages. See id. ,r,r 11, 13-15, 20, 41, 43-45, 47, 49-
53, and 56 ( cited at Appeal Br. 2-3). Relaxing, for the moment, the
8
Appeal2017-006013
Application 12/215,198
requirement to use computers to communicate information, the remainder of
the steps involve manual preparation of tax forms, outputting the forms, and
communicating information, all of which can be performed by humans using
pen and paper. In such an instance, the use of the web and computers is
merely an implementation of a manual process on computers to perform
simple output, communication, and monitoring steps.
We, thus, agree with the Examiner that claim 1, minus the nominal
mention of computer-based technology, is directed to an abstract idea, in the
form of a manual process based on a long-standing and common problem in
the business of providing professional services.
The Appellants, however, assert that the claims, as an ordered
combination of steps, go beyond the abstract idea to recite significantly more
that transforms the abstract idea into eligible subject matter, specifically "at
least transforming electronic documents, electronically notifying users, and
storing electronic data records." Appeal Br. 20-21. We are unpersuaded by
the Appellants' argument, because the identified steps involve no more than
basic computer functions of outputting content, communicating messages,
and storing data, which any general purpose computer is capable of
performing.
We are also unpersuaded by the Appellants' argument that the
additional features recited in dependent claims 2-9 and 13 represent eligible
subject matter because they "do not fall under any of the examples relied on
by the Examiner and amount to significantly more than an abstract idea." Id.
22-23. Here the Appellants have merely recited the full language of each of
the claims that depend from claim 1, and asserted they represent eligible
subject matter, merely because they are different than "the ones listed as an
9
Appeal2017-006013
Application 12/215,198
example of 'an abstract idea' by the USPTO." Id. 15. A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim. 37 C.F.R. § 4I.37(c)(l)(vii).
We have reviewed the remainder of the Appellants' arguments (see
Reply Br. 4---6), but are unpersuaded by them in light of the analysis we have
set forth here.
DECISION
We AFFIRM the rejection of claims 1-9, 13-21, 25-28, and 32-36
under 35 U.S.C. § 101 as directed to abstract ideas.
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
10