Ex Parte Howell et al

Patent Trials and Appeals BoardFeb 4, 2019

14113154 - (D) (P.T.A.B. Feb. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/113,154 05/15/2014 118925 7590 02/06/2019 Erise IP, P.A. 7015 College Blvd., Ste 700 Overland Park, KS 66211 FIRST NAMED INVENTOR Bryan R. Howell 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. 2513-37.00 4839 EXAMINER KHATTAR, RAJESH ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 02/06/2019 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): patents@eriseip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRYAN R. HOWELL, JASON A. MOORE, R. ALAN NEELY, and JIM L. BUTTONOW Appeal2018-000973 1 Application 14/113,154 Technology Center 3600 Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 60-67. App. Br. 5. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 The real party in interest is listed as HRB Tax Group, Inc., which operates as a subsidiary of H&R Block Group, Inc., which operates as a subsidiary of H&R Block, Inc. App. Br. 3. Appeal2018-000973 Application 14/ 113, 154 STATEMENT OF THE CASE Appellants' disclosure relates to "systems and methods for response or interaction with a taxing agency during the examination of a tax return." Spec. 1. Claim 60 is independent, and reproduced below for reference: 60. A non-transitory computer readable storage medium with a computer program stored thereon, wherein the computer program is operable to generate one or more solutions for responding to at least one examination issue raised by a taxing agency with respect to a taxpayer's tax return, wherein the computer program includes instructions for instructing one or more processors to perform the steps of: receiving tax information for the taxpayer, wherein at least some of the tax information is extracted from the taxing agency; presenting a tax interview to the taxpayer, wherein the tax interview requests the following information from the taxpayer: identification of any prior collection by the taxing agency, a monetary amount owed to the taxing agency, indication of any non-filed tax return with the taxing agency, income, and financial ability to pay the taxing agency the monetary amount owed to the taxing agency; receiving information indicative of one or more taxpayer goals relative to the one or more solutions, wherein the one or more taxpayer goals identifies the taxpayer's preference for at least one characteristic of the one or more solutions; in response to the tax interview, the information received from the taxpayer, and the received one or more taxpayer goals, generating said one or more solutions for responding to the examination issue; receiving an indication from the taxpayer that at least one of said one or more solutions is acceptable; in response to receiving the taxpayer's indication of the acceptable solution, determining information needed to implement said acceptable solution; 2 Appeal2018-000973 Application 14/ 113, 154 wherein determining information needed to implement the acceptable solution includes reviewing the received tax information to determine that it is the information needed to implement the acceptable solution; wherein the at least one solution is dependent on the following: information identifying that the taxpayer owes the monetary amount to the taxing agency and receipt of a final notice to effectuate a levy on the taxpayer; and presenting instructions to the taxpayer to facilitate implementing the acceptable solution. The Examiner's Rejection Claims 60-67 stand rejected under 35 U.S.C. Â§ 101 as being directed to a judicial exception to patent eligibility without significantly more. Final Act. 2. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments. Arguments Appellants could have made but chose not to make are deemed to be waived. See 37 C.F.R. Â§ 41.37(c)(l)(iv). The Examiner determines the claims are patent ineligible under 35 U.S.C. Â§ 101, because the claims are directed to an abstract idea of resolving (i.e., generating and implementing an acceptable solution to) a tax return- related examination issue, which is a fundamental economic practice, and the claims do not recite limitations that provide significantly more than the abstract idea itself. Ans. 2-5; see also Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 573 U.S. 208,217 (2014) (Describing the two-step framework "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts."). 3 Appeal2018-000973 Application 14/ 113, 154 After the mailing of the Answer and the filing of the Briefs in this case, the USPTO published revised guidance on the application ofÂ§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "Memorandum"). Under the Memorandum, the Office first looks to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human interactions such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP Â§ 2106.05(a}-(c), (e}-(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Office then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are not "well-understood, routine, conventional" in the field (see MPEP Â§ 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. See Memorandum. We are not persuaded the Examiner's rejection is in error. We adopt the Examiner's findings and conclusions as our own, to the extent consistent with our analysis. We add the following primarily for emphasis and clarification with respect to the Memorandum. Appellants argue the Examiner errs in determining the claims are directed to an abstract idea, because "like the claims in DDR Holdings [DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)], the claims relate to the economy and commerce but are not directed to a 4 Appeal2018-000973 Application 14/ 113, 154 fundamental economic practice." Reply Br. 6. Appellants further contend the claims "are not directed to an 'uninstantiated idea"' because "the claims do not recite a mental process that can be performed in the human mind" and "because the steps involved in the claim require interaction with the outside world." Reply Br. 7. We agree with the Examiner that claim 60 is directed to an abstract idea. See Final Act. 2; Ans. 2-3. Claim 60 recites the steps used to accomplish the generation of "one or more solutions for responding to at least one examination issue raised by a taxing agency with respect to a taxpayer's tax return." See claim 60, supra. The recited steps of "receiving tax information," "presenting a tax interview," "receiving information ... of one or more taxpayer goals," "generating one or more solutions," "receiving an indication ... that at least one ... solution[] is acceptable," "determining information need to implement," "reviewing the received tax information," and "presenting instructions" comprise fundamental economic principles or practices and/or commercial or legal interactions; thus the claim recites the abstract idea of "certain methods of organizing human activity." Memorandum, Section I (Groupings of Abstract Ideas); see also Spec. 12:8- 10 and Table 1 (requested information from the taxpayer). 2 2 See also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea."); Alice, 573 U.S. at 218 ("These claims are drawn to the abstract idea of intermediated settlement."); Buysafe, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims that "are squarely about creating a contractual relationship----a 'transaction performance guaranty"' held as "directed to an abstract idea"); Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. 5 Appeal2018-000973 Application 14/ 113, 154 We are unpersuaded by Appellants' arguments that the claims recite "significantly more" because claim 60 recites "both identifying the examination issue and solving the examination issue." Reply Br. 9; see also App. Br. 16-17. These limitations do not, for example, reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field. See Ans. 13. Rather, the disputed limitations may improve a taxpayer's position during a tax audit, and are part of the abstract idea itself. See Spec. 2: 14--15 ("In operation, the inventions can be used to efficiently and accurately resolve the examination of a tax return."). Based on the record before us, we do not discern "a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception." Memorandum, Section III(A)(2). Accordingly, the claim does not integrate the judicial exception into a practical application. See Memorandum, Section III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the Judicial Exception Is Integrated Into a Practical Application). Nor does the claim include a specific limitation or a combination of elements that amounts to significantly more than the judicial exception itself. See Memorandum, Section III(B) (Step 2B: If the Claim Is Directed to a Judicial Exception, Evaluate Whether the Claim Provides an Inventive Concept). The remaining Cir. 2013) (claims reciting "generalized software components arranged to implement an abstract concept [ of generating insurance-policy-related tasks based on rules to be completed upon the occurrence of an event] on a computer" not patent eligible); Bancorp Servs., L.L. C. v. Sun Life Assurance Co. of Can. (US.), 687 F.3d 1266, 1277 (Fed. Cir. 2012) (determining a "'method for managing a life insurance policy comprising' seven steps" is abstract). 6 Appeal2018-000973 Application 14/ 113, 154 claim elements only recite generic computer components that are well- understood, routine, and conventional. See Ans. 4; Spec. 9: 1-10: 17, Figs. 2-5; Alice, 573 U.S. at 226. Accordingly, we agree with the Examiner that claim 60 is patent ineligible, as well as dependent claims 61----67 not separately argued. See App. Br. 17. DECISION The Examiner's decision rejecting claims 60----67 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7