INTUIT INC.

Patent Trials and Appeals Board

Jan 29, 2021

2020001300 (P.T.A.B. Jan. 29, 2021)

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.
15/143,551 04/30/2016 Paul F. Hubbard 327696-000026 3973
155998 7590 01/29/2021
DLA PIPER LLP US - Intuit
ATTN: PATENT GROUP
11911 Freedom Dr.
Suite 300
RESTON, VA 20190
EXAMINER
BARTLEY, KENNETH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
01/29/2021 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):
PatentProsecutionRes@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL F. HUBBARD, TYLER THOMAS KRUPICKA,
ANDREW SCOTT JEDDELOH, NANKUN HUANG, and
AMIR R. EFTEKHARI1

Appeal 2020-001300
Application 15/143,551
Technology Center 3600
Before ERIC B. GRIMES, ULRIKE W. JENKS and
RACHEL H. TOWNSEND, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
virtual tax agent to aid in tax return preparation, which have been rejected as
ineligible for patenting. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies the real party in interest as INTUIT INC. Appeal Br. 2.
We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42.
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STATEMENT OF THE CASE
“Virtual agents are artificial intelligence powered computer software
that can assist human users in repetitive tasks. Virtual agents, such as
APPLE’s SIRI, MICROSOFT’s CORTANA and AMAZON’s ALEXA, are
increasingly common software user interfaces.” Spec. ¶ 28.
The Specification “describe[s] using completion graphs, query
objects, and natural language engines to implement a tax knowledge based
virtual agent (‘tax knowledge virtual agent’ or ‘virtual tax agent’) to
facilitate user interaction during tax return preparation.” Id. ¶ 27. “The
completion graph 12 . . . represent[s a] data structure[] that can be
constructed in the form of a tree . . . with nodes 20 and arcs 22.” Id. ¶ 57,
Fig. 12.
“Each node 20 contains a condition that in [one] example is expressed
as a Boolean expression that can be answered in the affirmative or negative.”
Id. ¶ 57. Arcs 22 connect the nodes 20 and “illustrate the dependencies
between nodes 20.” Id. “The combination of arcs 22 in the completion graph
12 illustrates the various pathways to completion.” Id.
“The query/domain object creator 126 is configured to analyze a node
20 . . . in a portion of a tax return completion graph 12 and assign the node
20 as a property/attribute value of a query object.” Id. ¶ 63. “A query object
is a set of questions and conditions that must be answered or satisfied in
order to answer a specific tax related question.” Id.
The Specification states that “tax knowledge virtual agents can
facilitate communication between users and third party principals relating to
the complicated task of tax return preparation. Further, tax knowledge
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virtual agents implemented with tax return completion graphs can be
modified with less time and effort to reflect changes in tax laws and
regulations.” Id. ¶ 31.
Claims 1–3, 5–13, 16–21, 23–28, and 31–33 are on appeal. Claim 19,
reproduced below, is illustrative:
19. A computer-implemented method for implementing a
virtual tax agent to facilitate user interaction with a tax return
preparation program, the method comprising:
identifying, by a completion graph parser executed on a
computing device, one or more nodes of a tax return completion
graph corresponding to a tax topic;
analyzing, by a query object creator executed on the
computing device, a first node from the one or more nodes;
assigning, by the query object creator, the first node as a
first property of a query object related to the tax topic;
mapping, by a natural language synthesis engine
executed on the computing device, the first property of the
query object related to the tax topic to a first natural language
question;
communicating the first natural language question to a
user;
receiving, by a natural language analysis engine executed
on the computing device, user input from the user in response
to communicating the first natural language question;
analyzing, by a natural language analysis engine, the user
input to identify a characteristic that maps to the first property
of the query object related to the tax topic based on the user
input;
modifying, by a runner interface executed on the
computing device, the query object related to the tax topic
based on the characteristic of the user;
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updating the tax return completion graph based on the
modified query object;
analyzing the updated tax return completion graph to
determine whether the updated tax return completion graph is
complete,
mapping a result of the updated tax return completion
graph to a natural language statement when the runner interface
determines the updated tax return completion graph is
complete; and
instructing the user interface to communicate the natural
language statement to the user when the runner interface
determines the updated tax return completion graph is
complete.
Appeal Br. 18 (Claims Appendix).
Claims 1 and 33 are the other independent claims. Claim 1 is directed
to a system comprising the elements (completion graph parser, query object
creator, etc.) recited in the method of claim 19. Claim 33 is directed to a
computer program product comprising instructions that carry out the method
of claim 19.
OPINION
Claims 1–3, 5–13, 16–21, 23–28, and 31–33 stand rejected under 35
U.S.C. § 101, on the basis that “the claimed invention is directed to an
abstract idea without significantly more.” Final Action 10.2 The Examiner
finds that all of the steps of claim 19, “under their broadest reasonable
interpretation, cover performance of the limitation as certain methods of
organizing human activity”; specifically, “performance of the limitation as
legal interactions and legal obligations (e.g. tax return is a legal obligation).”

2 Office Action mailed April 4, 2019.
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Id. at 11. The Examiner also finds that, “as the claims observe (identifying,
receiving), evaluate (identifying, analyzing, assigning, mapping), and
provide a judgement (instructing) the claims also recite claim elements that
can be performed in the human mind and therefore abstract as Mental
Processes as well.” Id. at 12.
The Examiner finds that the judicial exception “is not integrated into a
practical application” because “the claims only recite a computer. The
computer hardware is recited at a high-level of generality (i.e., as a generic
processor performing a generic computer function) such that it amounts [to]
no more than mere instructions to apply the exception using a generic
computer component.” Id.
Finally, the Examiner finds that “[t]he claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because . . . the additional element of using a
computer hardware amounts to no more than mere instructions to apply the
exception using a generic computer component.” Id. at 12–13. The Examiner
concludes that “claims 1, 19 and 33 are not patent eligible.” Id.
Appellant argues that the claimed system and method, “being more
robust and flexible than conventional electronic tax preparation systems, and
facilitating communications throughout the process[,] are improvements to
the electronic tax preparation field.” Appeal Br. 12. Appellant also argues
that “less processing is being performed” in the claimed method, because it
“minimiz[es] the amount of questions,” which “improves the speed and
efficiency of the electronic tax preparation process.” Id. Appellant argues
that “another benefit” is that “‘tax knowledge virtual agents implemented
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with tax return completion graphs can be modified with less time and effort
to reflect changes in tax laws and regulations.’” Id. at 12–13 (quoting Spec.
¶ 31).
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.
Alice, 573 U.S. 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
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
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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 water-proof 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.”).
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).
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“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. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”).3 “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 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
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 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.pdf).
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(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”).4
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.
Revised Guidance, 84 Fed. Reg. at 52–56.
Revised Guidance Step 2A, Prong 1
We first consider whether the claims recite a judicial exception. The
Revised Guidance identifies three groupings of subject matter included in
the abstract idea exception, including “[c]ertain methods of organizing
human activity,” such as “commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,

4 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 Revised Guidance - Section III(A)(2), 84 Fed. Reg.
at 54–55.
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marketing or sales activities or behaviors; business relations).” 84 Fed. Reg.
at 52. The categories of abstract ideas also include “[m]ental processes—
concepts performed in the human mind (including an observation,
evaluation, judgment, opinion).” Id. “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.” Id. at 52, n.14.
Claim 19 recites “a tax return completion graph corresponding to a tax
topic” and a “query object related to the tax topic.” The claimed invention
therefore relates to filing a tax return, which the Examiner has found to be
among the “certain methods of organizing human activity” that constitute an
abstract idea under the Revised Guidance. See Final Action 11.
Claim 19 also recites “identifying . . . one or more nodes of a tax
return completion graph corresponding to a tax topic” and “analyzing . . . a
first node from the one or more nodes.” A “node” of a tax return completion
graph is a condition that affects the outcome of a particular tax topic; e.g., a
question that affects whether a child qualifies as a dependent for federal
income tax purposes. Spec. ¶ 57; see also Fig. 11. The Examiner finds that
the “identifying” and “analyzing” steps of claim 19 “can be performed in the
human mind and therefore [are] abstract as Mental Processes.” Final Action
12.
Appellant argues that “the claims are not abstract (i.e., the claimed
invention cannot be implemented in someone’s mind or by pen and paper,
nor is its processing conventional).” Appeal Br. 10.
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However, Appellant provides no evidence or reasoned basis to support
the position that the “identifying” and “analyzing” steps of claim 19, at least,
cannot be performed mentally, nor does Appellant dispute the Examiner’s
finding that the claimed method recites a method of organizing human
activity—specifically, filing a tax return—that constitutes an abstract idea.
Thus, the record supports the Examiner’s finding that claim 19 recites an
abstract idea.
Revised Guidance Step 2A, Prong 2
Although the claims recite an abstract idea, they are still patent-
eligible if “the claim as a whole integrates the recited judicial exception into
a practical application of that exception.” Revised Guidance, 84 Fed. Reg. at
53. “A claim that integrates a judicial exception into a practical application
will apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception.” Id.
The analysis of whether a claim integrates a judicial exception into a
practical application includes “[i]dentifying whether there are any additional
elements recited in the claim beyond the judicial exception(s)” and
“evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.”
Id. at 54–55. Considerations indicating that an exception is integrated into a
practical application include “an improvement in the functioning of a
computer, or an improvement to other technology or technical field.” Id. at
55.
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Here, in addition to the recited method of organizing human activity
and mental processes, claim 19 recites several software components,5
executed on a computing device, that carry out specific functions relating to
preparation of a tax return. Specifically, claim 19 recites:
(a) a completion graph parser that identifies nodes of a tax return
completion graph,
(b) a query object creator that analyzes the identified nodes and
assigns a node as a property of a query object,
(c) a natural language synthesis engine that maps a property of the
query object to a natural language question,
(d) a natural language analysis engine that receives user input and
analyzes that input to identify a characteristic that maps to the property of
the query object, and
(e) a runner interface that modifies the query object based on the user
input, updates the tax return completion graph based on the modified query
object, and analyzes the updated graph to determine whether it is complete.
The Specification states that the resulting virtual tax agent is an
improvement over “[c]urrent virtual agents[, which] are tasked [sic] based.”
Spec. 29. Specifically:
Tax knowledge virtual agents that modify tax return completion
graphs using natural language questions and inputs are more
robust and flexible than task based virtual agents. As such, tax

5 The Specification states that each of the completion graph parser, query
object creator, natural language synthesis engine, natural language analysis
engine, and runner interface can be “software and/or hardware components.”
Spec. ¶ 39. For purposes of discussion, we will refer to them as software
components.
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knowledge virtual agents can facilitate communication between
users and third party principals relating to the complicated task
of tax return preparation. Further, tax knowledge virtual agents
implemented with tax return completion graphs can be modified
with less time and effort to reflect changes in tax laws and
regulations.
Id. ¶ 31 (emphasis added).
Appellant also points to the following paragraph in the Specification
(Appeal Br. 12):
As one can imagine given the complexities and nuances of the
tax code, many tax topics may contain completeness graphs 12
that have many nodes with a large number of pathways to
completion. However, many branches or lines within the
completion graph 12 can be ignored, for example, when certain
questions internal to the completion graph 12 are answered that
eliminate other nodes 20 and arcs 22 within the completion
graph 12. The dependent logic expressed by the completion
graph 12 allows one to minimize subsequent questions based on
answers given to prior questions. This allows a minimum
question set that can be generated that can be presented to a
user as explained herein.
Spec. ¶ 58 (emphasis added).
Thus, the Specification supports Appellant’s position that a tax
knowledge virtual agent, implemented as recited in the claims, represents an
improvement in the technical field of computer-based tax return preparation
because it is more robust and flexible than current virtual agents, can be
modified with less time and effort, and minimizes the number of questions
that a user must answer in order to complete a given tax-related topic.
The Examiner does not provide evidence contradicting the
Specification’s characterization of the claimed virtual tax agent as an
improvement in electronic tax return preparation. Rather, the Examiner
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reasons that “the improvement of ‘knowledge virtual agents’ over ‘task
based virtual agents’ is an easier interface for taxpayers to use for tax return
preparation. This is improving existing virtual tax agent interfaces which is
improving a business method interface.” Ans. 8. That is, the Examiner’s
position is that the claimed virtual tax agent “is using virtual agents and
completion graphs (logic trees) for tax purposes. The additional or additional
inventive element itself cannot be abstract.” Id. at 9. See also id. at 14–15
(“Both the natural language synthesis engine and runner interface are
directly linked to filling out a tax return. . . . The natural language engine
and runner interface therefore would not be a non-abstract additional
inventive concept adding a specific improvement over prior art systems.”).
We do not agree with the Examiner’s position that, because the
claimed computer-based invention relates to preparing a tax return, it fails to
include additional elements that integrate the “certain methods of organizing
human activity” (specifically, legal obligations), i.e., the judicial exception,
into a practical application. The claimed invention is not akin to a tool for
managing a person’s financial holdings for tax purposes, e.g., a novel tax
shelter scheme. See, e.g., Fort Props., Inc. v. American Master Lease LLC,
671 F.3d 1317 (Fed. Cir. 2012).
In Fort Properties, the claims were directed to “an investment tool
designed to enable property owners to buy and sell properties without
incurring tax liability.” Id. at 1319. The claims involved the “conceptual
steps” of “aggregating real property into a real estate portfolio, dividing the
interests in the portfolio into a number of deedshares, and subjecting those
shares to a master agreement.” Id. at 1322. The fact that the claims involved
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real property, deeds, and contracts was not sufficient to transform the
abstract concept into a patent eligible one, even though all of the claims
were styled as method claims. Id. The same was true for claims “requiring a
computer to ‘generate a plurality of deedshares’” (id. at 1323): “AML
simply added a computer limitation to claims covering an abstract concept—
that is, the computer limitation is simply insignificant post-solution
activity.” Id. at 1323–24.
Here, by contrast, the claims recite a completion graph parser that
identifies nodes of a tax return completion graph, a query object creator that
assigns a node as a property of a query object, a natural language synthesis
engine that maps the query object to a natural language question, a natural
language analysis engine that receives user input and relates it to the query
object, and a runner interface that modifies the query object, updates the tax
return completion graph, and determines whether the updated graph is
complete.
As described in the Specification, these steps improve the field of
electronic tax return preparation by providing a more robust and flexible
interface that can be modified with less time and effort, and that minimizes
the number of questions presented to a user in the process of filling out a tax
return. These improvements are said to result from the specific software
components recited in the claims, and thus are reasonably interpreted as
technical improvements, not as improvements in a method of organizing
human activity.
The Examiner also disputes the improvement relating to minimizing
the number of tax questions for a user to answer: “Minimizing the amount of
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[tax] questions generated and presented to a user to improve the speed and
efficiency of the tax preparation process is not improving technology itself
but is at best an intended result of tax preparation.” Ans. 9 (alteration in
original).
We are not convinced by the Examiner’s reasoning. A software-based
method can improve a process by which a user interacts with a computer and
provide for a patent eligible invention without improving the technology of
the computer hardware itself. See, e.g., Core Wireless Licensing S.A.R.L v.
LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018) (claims to “improved
display interfaces . . . [that] allow a user to more quickly access desired data
stored in . . . electronic devices,” id. at 1359, held to be patent-eligible
because they “recite[d] a specific improvement over prior systems, resulting
in an improved user interface for electronic devices.” Id. at 1363.)
Here, the Specification states that the claimed invention improves the
user experience by minimizing the number of questions that a user has to
answer in the process of filling out a tax return. The Examiner has not
persuasively explained why a user would not consider a less time-consuming
process to be an improvement. Cf. Core Wireless, 880 F.3d at 1363 (“The
disclosed invention improves the efficiency of using the electronic device.
. . . The speed of a user’s navigation through various views and windows can
be improved.”).
The fact that the improvement is not apparent until the software is
used for its intended purpose does not make the improvement an “intended
result” with no patentable weight. Software must be used in order to provide
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any benefit, including an improved benefit compared to previous software
designed to perform a similar overall function.
In summary, the Examiner has not shown, by a preponderance of the
evidence of record, that the additional elements recited in the claims beyond
the judicial exceptions fail to integrate that judicial exception into a practical
application, and thus do not represent an improvement to the technical field
of computer-based tax return preparation, as stated in the Specification. We
therefore conclude that those additional elements integrate the recited
exceptions into a practical application. “When the exception is so integrated,
then the claim is not directed to a judicial exception . . . and is eligible. This
concludes the eligibility analysis.” Revised Guidance, 84 Fed. Reg. at 54.
The rejection of claims 1–3, 5–13, 16–21, 23–28, and 31–33 under 35
U.S.C. § 101 is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–13,
16–21, 23–
28, 31–33
101 Eligibility 1–3, 5–13,
16–21, 23–
28, 31–33

REVERSED