Intuit Inc.

Patent Trials and Appeals Board

Jun 17, 2020

14788261 - (D) (P.T.A.B. Jun. 17, 2020)

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.
14/788,261 06/30/2015 Thai Dang INTU1508767 1053
163860 7590 06/17/2020
Paradice and Li LLP/Intuit
1999 S. Bascom Ave.
Suite 300
Campbell, CA 95008
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
06/17/2020 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):
uspto@paradiceli.com
william@paradiceli.com
yip@paradiceli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THAI DANG, COREY DANIEL LEAMON,
CAROL ANN HOWE, HUGH D. MACDONALD, ANDREW ROE,
ALEXANDRA GRAHAM KOPJAK, LYLE AVERY TAKACS,
ROBERT E. BAMFORD, SYLVIA KNUST, and ALEXIS HARTFORD

Appeal 2019-006414
Application 14/788,261
Technology Center 3600
Before JOHNNY A. KUMAR, LINZY T. MCCARTNEY, and
BETH Z. SHAW, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–28. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Intuit, Inc. Appeal
Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a method and system for personalizing and
facilitating a tax return preparation interview in a tax return preparation
system by using a multi-sectional view of interview content to progress a
user through the tax return preparation interview.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computing system implemented method comprising:
displaying, with a computing device, first user income
information at least partially based on user data received from a user,
wherein the first user income information identifies one or more of
employee wages, contractor income, retirement income,
unemployment income, alimony, and investment income;
prior to acquiring second user income information from the user
during the tax return preparation interview, displaying characteristics
of the first user income information in a first section of a user
interface indicate which of the first user income information has been
identified by an electronic tax return preparation system;
acquiring mood information from the user;
reducing the bandwidth and memory requirements of the
process by eliminating one or more irrelevant questions and inquiries
of an interview process through, in a second section of the user
interface, acquiring, through the interview process being personalized
at least partially based on the acquired mood information, and at least
partly through a portion of the user interface configured with
selectable icons customized according to existing user information
known
about the user, second user income information and other life
information from the user, in response to receipt of an indication from
the user that the first user income information is an incomplete
representation of total user income information for the user; and
updating the first section of the user interface with the second
user income information to reduce a likelihood of abandonment of the
tax return preparation interview by the user;
the user interface further including a progress menu having one
or more of words, buttons or links indicating the user's progress
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through the interview process, the progress menu configured to enable
the selection of sections of the interview process through the user
clicking on or otherwise selecting words, buttons or links of the
progress menu.
REJECTION
Claims 1–28 are rejected under 35 U.S.C. § 101. Final Act. 2.
OPINION
Appellant argues the pending claims as a group. As permitted by 37
C.F.R. § 41.37, we decide this issue based on claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv)(2016).
PRINCIPLES OF LAW
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219
(“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.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
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in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court also
indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
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If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51; see
also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
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human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.

Abstract Idea
Turning to Step 2A, Prong 1, the claimed method includes the
following limitations, emphasized in italics:
displaying, with a computing device, first user income
information at least partially based on user data received from a user,
wherein the first user income information identifies one or more of

3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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employee wages, contractor income, retirement income,
unemployment income, alimony, and investment income;
prior to acquiring second user income information from the
user during the tax return preparation interview, displaying
characteristics of the first user income information in a first section of
a user interface indicate which of the first user income information
has been identified by an electronic tax return preparation system;
acquiring mood information from the user;
reducing the bandwidth and memory requirements of the
process by eliminating one or more irrelevant questions and inquiries
of an interview process through, in a second section of the user
interface, acquiring, through the interview process being personalized
at least partially based on the acquired mood information, and at least
partly through a portion of the user interface configured with
selectable icons customized according to existing user information
known about the user, second user income information and other life
information from the user, in response to receipt of an indication from
the user that the first user income information is an incomplete
representation of total user income information for the user; and
updating the first section of the user interface with the second
user income information to reduce a likelihood of abandonment of the
tax return preparation interview by the user;
the user interface further including a progress menu having one
or more of words, buttons or links indicating the user's progress
through the interview process, the progress menu configured to enable
the selection of sections of the interview process through the user
clicking on or otherwise selecting words, buttons or links of the
progress menu.

For the following reasons, we conclude claim 1 recites at least one
abstract idea grouping listed in the 2019 Eligibility Guidance: “[m]ental
processes.” See 2019 Eligibility Guidance, 84 Fed. Reg. at 52, 53 (listing
“[m]ental processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion)” as one of the “enumerated
groupings of abstract ideas” (footnote omitted)). The guidance explains that
“[m]ental processes” include acts that people can perform in their minds or
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using pen and paper, even if the claim recites that a generic computer
component performs the acts. See 2019 Eligibility Guidance, 84 Fed. Reg. at
52 n.14 (“If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.”) (emphasis omitted); see also
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (“[W]ith the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper.”), quoted in 2019
Eligibility Guidance, 84 Fed. Reg. at 52 n.14; Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (holding that
computer-implemented method for “anonymous loan shopping” was an
abstract idea because it could be “performed by humans without a
computer”); quoted in 2019 Eligibility Guidance, 84 Fed. Reg. at 52 n.14.
The method recited in claim 1 executes steps that people can perform
in their minds or using pen and paper. A person can “display[] first user
income information at least partially based on user data received from a
user” using a pen and paper. A person can “acquir[e] mood information from
the user” using his or her mind or pen and paper. A person can “eliminate[e]
one or more irrelevant questions and inquiries of an interview process,”
using his or her mind or pen and paper.
We add that the above-noted recited function that eliminates one or
more irrelevant questions and inquiries of an interview process can also be
performed entirely mentally by merely thinking about these identifications or
writing them down—involving mere observation and logical reasoning. Cf.
CyberSource, 654 F.3d at 1372 (noting that a recited step that utilized a map
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of credit card numbers to determine the validity of a credit card transaction
could be performed entirely mentally by merely using logical reasoning to
identify a likely instance of fraud by merely observing that numerous
transactions using different credit cards all originated from the same IP
address). Therefore, the recited elimination function also falls squarely
within the mental processes category of the agency’s guidelines and,
therefore, recites an abstract idea for that additional reason. See Guidance,
84 Fed. Reg. at 52 (listing exemplary mental processes including
observation and evaluation).
Although the claim recites an abstract idea based on these mental
processes, we nevertheless must still determine whether the abstract idea is
integrated into a practical application, namely whether the claim applies,
relies on, or uses the abstract idea in a manner that imposes a meaningful
limit on the abstract idea, such that the claim is more than a drafting effort
designed to monopolize the abstract idea. See Revised Guidance, 84 Fed.
Reg. at 54–55. To this end, we (1) identify whether there are any additional
recited elements beyond the abstract idea, and (2) evaluate those elements
individually and collectively along with the limitations that recite abstract
ideas to determine whether they integrate the exception into a practical
application. See id.
Turning to Step 2A, Prong 2, the remaining elements recited in claim
1 do not integrate the abstract idea into a practical application. In addition to
the steps discussed above, claim 1 recites a “computing device” and a “user
interface.” The recited computing device and user interface are generic
components. See, e.g., Spec. ¶¶ 19, 20, 39, 42. See 2019 Eligibility
Guidance, 84 Fed. Reg. at 55 (identifying “merely includ[ing] instructions to
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implement an abstract idea on a computer” as an example of when an
abstract idea has not been integrated into a practical application).
We are not persuaded that the claimed invention improves the
computer or its components’ functionality or efficiency, or otherwise
changes the way those devices function, at least in the sense contemplated
by the Federal Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d
1327 (Fed. Cir. 2016), despite Appellant’s arguments to the contrary (App.
Br. 11). The claimed self-referential table in Enfish was a specific type of
data structure designed to improve the way a computer stores and retrieves
data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant contends
that the claimed invention uses such a data structure to improve a
computer’s functionality or efficiency, or otherwise change the way that
device functions, there is no persuasive evidence on this record to
substantiate such a contention.
Thus, the claims do not integrate the judicial exception into a practical
application. The claims do not (1) improve the functioning of a computer or
other technology, (2) are not applied with any particular machine (except for
a generic computer), (3) do not effect a transformation of a particular article
to a different state, and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h). We, therefore, agree with the Examiner that
claim 1 is directed to an abstract idea.
Accordingly, the claim as a whole does not integrate the abstract idea
into a practical application because the claim limitations do not impose any
meaningful limits on practicing the abstract idea. Stated differently, the
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claims do not (1) improve the functioning of a computer or other technology,
(2) are not applied with any particular machine (except for generic computer
components), (3) do not effect a transformation of a particular article to a
different state, and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim, as a whole, is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h).
Inventive Concept
Because we determine that claim 1 is “directed to” an abstract idea,
we next consider whether claim 1 recites an “inventive concept.” The
Examiner determined that claim 1 does not recite an inventive concept
because the additional elements in the claim do not amount to “significantly
more” than an abstract idea. See Ans. 5.
We agree with the Examiner’s determination in this regard. Ans. 5.
Using generic computer components to perform abstract ideas does not
provide the necessary inventive concept. See Alice, 573 U.S. at 223 (“[T]he
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention.”). Thus, the elements of claim
1 do not amount to “significantly more” than the abstract idea itself.
Preemption is a driving concern when determining patent eligibility.
See Alice, 573 U.S. at 216–17. Patent law cannot inhibit further discovery by
improperly tying up the future use of the building blocks of human
ingenuity. See id. (citing Mayo, 566 U.S. at 85–86). Although preemption is
characterized as a driving concern for patent eligibility, preemption itself is
not the test for patent eligibility. “Where a patent’s claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework, as
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they are in this case, preemption concerns are fully addressed and made
moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015). “While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Id.
To the extent Appellant contends that the recited limitations, including
those detailed above in connection with Alice step one, add significantly
more than the abstract idea to provide an inventive concept under
Alice/Mayo step two (see Appeal Br. 13–14), these limitations are not
additional elements beyond the abstract idea, but rather are directed to the
abstract idea as noted previously. See Revised Guidance, 84 Fed. Reg. at 56
(instructing that additional recited elements should be evaluated in
Alice/Mayo step two to determine whether they (1) add specific limitations
that are not well-understood, routine, and conventional in the field, or (2)
simply append well-understood, routine, and conventional activities
previously known to the industry (citing MPEP § 2106.05(d)). These
elements form part of the recited abstract ideas and thus are not “additional
elements” that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78); see also
Revised Guidance, 84 Fed. Reg. at 55 n.24 (“USPTO guidance uses the term
‘additional elements’ to refer to claim features, limitations, and/or steps that
are recited in the claim beyond the identified judicial exception.” (Emphasis
added)).
Rather, the recited computing device and user interface are the
additional recited elements whose generic computing functionality is well-
understood, routine, and conventional. See Ans. 5 (explaining how a user
interface with a progress bar and eliminating processes to free up bandwidth
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and memory are old and well known, with supporting evidence); see also In
re Warmerdam, 33 F.3d 1354, 1361–62 (Fed. Cir. 1994) (quoting computer
dictionary definition of “data structure” as “[a] physical or logical
relationship among data elements, designed to support specific data
manipulation functions”) (emphasis omitted); Intellectual Ventures, 792
F.3d at 1368 (noting that a recited user profile (i.e., a profile keyed to a user
identity), database, and communication medium are generic computer
elements); Mortgage Grader Inc. v. First Choice Loan Services, Inc., 811
F.3d 1314, 1324–25 (Fed. Cir. 2016) (noting that components such an
“interface,” “network,” and “database” are generic computer components
that do not satisfy the inventive concept requirement); buySAFE v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and
sends the information over a network—with no further specification—is not
even arguably inventive.”); US 2008/0046307 A1 (describing an Internet-
based market research system that uses generic computing components,
including a server and database, that extends an offer to grant an ownership
interest in a company in exchange for receiving feedback from respondent
members of a target market). Accord Final Act. 3–4; Ans. 4–8 (concluding
that the claims’ general-purpose computing devices do not add significantly
more than the abstract idea).
Appellant’s reliance on Core Wireless Licensing S.A.R.L. v. LG
Electronics, Inc., 880 F.3d 1356 (2018) (Appeal Br. 14) is unavailing.
There, the court held eligible claims reciting a computing device that could
display an application summary window that was not only reachable directly
from the main menu, but could also display a limited list of selectable
functions while the application was in an un-launched state. Core Wireless,
880 F.3d at 1360–63 (emphasis added). In reaching its eligibility
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conclusion, the court noted that the claimed invention was directed to an
improved user interface for computing devices, particularly those with small
screens. Id.
That is not the case here. To the extent that Appellant contends that
the claimed invention is directed to such improvements in computer
capabilities (see Appeal Br. 14), there is no persuasive evidence on this
record to substantiate such a contention.
To the extent Appellant contends that the claimed invention is rooted
in technology because it is ostensibly directed to a technical solution, we
disagree. Even assuming, without deciding, that the claimed invention can
facilitate an electronic tax return preparation interview faster than before,
any speed increase comes from the capabilities of the generic computer
components—not the recited process itself. See FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278
(Fed. Cir. 2012) (“[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”)); see also Intellectual
Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir.
2017) (unpublished) (“Though the claims purport to accelerate the process
of finding errant files and to reduce error, we have held that speed and
accuracy increases stemming from the ordinary capabilities of a general-
purpose computer ‘do[ ] not materially alter the patent eligibility of the
claimed subject matter.’”). Like the claims in FairWarning, the focus of
claim 1 is not on an improvement in computer processors as tools, but on
certain independently abstract ideas that use generic computing components
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as tools. See FairWarning, 839 F.3d at 1095 (citations and quotation marks
omitted).
Accordingly, we sustain the Examiner’s rejection of the pending
claims under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.
CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome:
101 1–28

TIME PERIOD FOR RESPONSE
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.
§ 1.136(a)(1)(iv).
AFFIRMED