Intuit Inc.

Patent Trials and Appeals Board

Jan 13, 2022

2021002642 (P.T.A.B. Jan. 13, 2022)

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. 14/484,119 09/11/2014 Jonathan Goldman 327696-000021 2390 155998 7590 01/13/2022 DLA PIPER LLP US - INTUIT ATTN: PATENT GROUP 11911 FREEDOM DR. SUITE 300 RESTON, VA 20190 EXAMINER ANDERSON, SCOTT C ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 01/13/2022 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 JONATHAN GOLDMAN, MASSIMO MASCARO, and WILLIAM T. LAASER ____________ Appeal 2021-002642 Application 14/484,119 Technology Center 3600 ____________ Before HUBERT C. LORIN, NINA L. MEDLOCK, CYNTHIA L. MURPHY, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 2, 5-11, 16, 17, 19, and 20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed January 5, 2021) and Reply Brief (“Reply Br.,” filed March 10, 2021), and the Examiner’s Answer (“Ans.,” mailed January 29, 2021) and Final Office Action (“Final Act.,” mailed September 25, 2020). Appellant identifies Intuit, Inc. as the real party in interest (Appeal Br. 2). Appeal 2021-002642 Application 14/484,119 2 CLAIMED INVENTION The Specification states, “[e]mbodiments of the present invention are directed to methods, systems[,] and articles of manufacture for using one or more predictive models for tailoring and personalizing the user experience in preparing an electronic tax return using a tax return preparation application” (Spec. ¶ 1). Claims 1, 16, and 19 are the independent claims on appeal. Claim 1, reproduced below with bracketed notations added, is illustrative of the claimed subject matter: 1. A computer-implemented method of predicting tax matters for a taxpayer that should be presented during preparation of an electronic tax return, the method comprising: [(a)] a tax return preparation system accessing taxpayer data from one or more data sources, the tax payer data comprising at least one of personal data and tax data regarding the taxpayer, the tax return preparation system comprising a computing device having a computer processor, memory, and a tax return preparation software application executing a tax logic agent, a calculation engine, a user interface manager and a predictive model on the processor, the tax return preparation software application comprising a tax calculation graph structure comprising at least one node automatically populated by the tax return preparation software application, a completeness graph data structure configured with tax questions, and a shared data store in the memory and containing a schema representative of fields required to complete the tax return; [(b)] the calculation engine performing one or more tax calculations based on the tax calculation graph data structure using tax data read from the shared data store and updating the shared data store based on the tax calculations; Appeal 2021-002642 Application 14/484,119 3 [(c)] the predictive model receiving the taxpayer data, inputting the taxpayer data into the predictive model and generating one or more predicted tax matters comprising tax topics and/or tax questions for the taxpayer and a score for each predicted tax matter quantifying a probability that a respective tax matter is for the taxpayer; [(d)] the tax logic agent receiving the predicted tax matters and scores and reading tax data from the shared data store; [(e)] the tax logic agent accessing a plurality of decision tables representing the completion graph, each decision table comprising a plurality of columns, each column corresponding to a tax question, and a plurality of rows, each row corresponding to a completion path for a tax rule, thereby forming a plurality of cells with each cell corresponding to a particular row and column, each cell in a respective row having a logic operator corresponding to the tax question of each cell’s respective column such that completion of each respective row is determined by the logic operators in the respective row, wherein the tax logic agent determines that an answer to a question stored in a row eliminates one or more rules or one or more columns from consideration for completing the tax return; [(f)] the tax logic agent analyzing the tax data from the shared data store and traversing the decision tables using the tax data and determining one or more suggested tax matters for obtaining missing tax data required to complete the tax return; [(g)] the tax logic agent determining a numerical ranking for each of the suggested tax matters determined by the tax logic agent using the scores for the tax matters; and Appeal 2021-002642 Application 14/484,119 4 [(h)] the user interface manager receiving the suggested tax matters and numerical rankings, determining one or more initial tax questions to present to a user for obtaining missing tax data for completing the tax return and generating an interview screen having the one or more initial tax questions to be presented to the user based at least in part upon the suggested tax matters and the numerical rankings, wherein the user interface manager is loosely connected to the tax calculation engine and is configured to determine whether the suggested tax matters from the tax logic agent will be processed and, for those suggested tax matters that are to be processed, when and how such suggested tax matters will be processed. REJECTIONS Claims 1, 2, 5-11, 16, 17, 19, and 20 are rejected under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter that the inventors regard as the invention. Claims 1, 2, 5-11, 16, 17, 19, and 20 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. ANALYSIS Indefiniteness In rejecting the pending claims under 35 U.S.C. § 112(b), the Examiner found that the term “loosely connected” in independent claims 1, 16, and 19 is a relative term that renders the claims indefinite (Final Act. 2). The Examiner noted that “loosely connected” is neither a term of art nor defined in the Specification, and that the Specification also does not provide “a standard for ascertaining the requisite degree” to which the user interface manager is connected to the tax calculation engine (id.; see also Ans. 3-4). Therefore, the Examiner concluded that a person of ordinary skill in the art “would not be reasonably apprised of the scope of the invention,” i.e., that it Appeal 2021-002642 Application 14/484,119 5 would not have been clear to a skilled artisan, at the time the claimed invention was made, “[w]hich manners of connecting the user interface manager to the tax calculation engine would infringe the claim[s] and which manners of connecting the two would not infringe” (Final Act. 2-3). Appellant argues that “the claims as a whole recite a distributed architecture and configuration of the tax return preparation software application, which sets forth the metes and bounds of the ‘loosely coupled’ limitation while also removing any alleged uncertainty of this term” (Appeal Br. 14). And Appellant reproduces the language of claim 1, with selected emphasis, to support this position (id. at 14-15). Appellant also reproduces Figure 7 of the Specification and quotes extensively from paragraphs 2 and 57, explaining that “key components of the ‘loosely coupled’ limitation are the completeness and calculation graphs recited in the claims” (id. at 15-16). Appellant asserts that “there is a direct connection between the components of the tax return preparation software application, the processing performed by these components, and the requirement that the [sic] ‘the user interface manager is loosely connected to the tax calculation engine’” (Appeal Br. 16), and that, when the claimed “loosely coupled” limitation is read in light of the Specification, a person skilled in the art would understand “its precise and clear meaning and its limiting effect on the appealed claims” (id.). Yet, as the Examiner observes, the claims as a whole give no hint as to what “loosely connected” is supposed to mean (Ans. 4). And although Appellant emphasizes the disclosure in paragraphs 2 and 57, i.e., that the use of certain data structures “permits the user interface to be loosely connected or even divorced from the tax calculation engine and the data used in the tax calculations” (Appeal Br. 15), we agree with the Appeal 2021-002642 Application 14/484,119 6 Examiner that “this only says that it is possible for things to be loosely connected, without giving any hint as to what it means for them to be loosely connected” (Ans. 4). We are not persuaded on the present record that the Examiner erred in rejecting claims 1, 2, 5-11, 16, 17, 19, and 20 under 35 U.S.C. § 112(b). Therefore, we sustain the Examiner’s rejection. Patent-Ineligible Subject Matter Under 35 U.S.C. § 101, “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, Appeal 2021-002642 Application 14/484,119 7 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ - i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217-18 (alteration in original). The U.S. Patent and Trademark Office (the “USPTO”) published revised guidance on January 7, 2019, for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised Guidance”).2 That guidance revised the USPTO’s examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50. The first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next determine, in Step 2A, Prong Two, whether the claim as a whole integrates the recited judicial exception into a practical application, i.e., whether the 2 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the revised guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020). Appeal 2021-002642 Application 14/484,119 8 additional elements recited in the claim beyond the judicial exception, apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Id. at 54-55. Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. Id. If the claim is determined to be directed to a judicial exception under revised Step 2A, we next evaluate the additional elements, individually and in combination, in Step 2B, to determine whether they provide an inventive concept, i.e., whether the additional elements or combination of elements amounts to significantly more than the judicial exception itself; only then, is the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56. Here, in rejecting the pending claims under 35 U.S.C. § 101, the Examiner determined that independent claims 1, 16, and 19 recite accessing taxpayer data, performing tax calculations, receiving the taxpayer data, making predictions based on it, evaluating “decision tables” in order to figure out how to fill out a tax return, skipping some of the questions based on the answer to others . . ., determining “suggested tax matters for obtaining missing tax data,” ranking the tax matters[,] and determining questions to present to a user[,] i.e., tax preparation, which the Examiner concluded is “within the enumerated ‘certain methods of organizing human activity’ in the 2019 [R]evised Guidance” (Final Act. 3). The Examiner further reasoned that “these are mental steps, which can be done mentally and with pen and paper,” and that the claims, thus, “also lie within the enumerated abstract idea of ‘mental processes’” (id. at 3-4). Appeal 2021-002642 Application 14/484,119 9 The Examiner determined that the recited abstract idea is not integrated into a practical application (Final Act. 4-5); that the independent claims do not include additional elements sufficient to amount to significantly more than the abstract idea itself (id. at 5-7); and that the dependent claims are patent ineligible for substantially the same reasons (id. at 7). Independent Claim 1 and Dependent Claims 2 and 5-11 The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335-36. The Specification is titled “METHODS[,] SYSTEMS[,] AND ARTICLES OF MANUFACTURE FOR USING A PREDICTIVE MODEL TO DETERMINE TAX TOPICS WHICH ARE RELEVANT TO A TAXPAYER IN PREPARING AN ELECTRONIC TAX RETURN,” and discloses that “[e]mbodiments of the present invention are directed to methods, systems[,] and articles of manufacture for predicting which tax matters are relevant to a particular taxpayer during preparation of an electronic tax return on a tax return preparation system” (Spec. ¶ 55). The Specification describes that the tax return preparation system, thus, operates on a new construct in which tax rules and the calculations based on those Appeal 2021-002642 Application 14/484,119 10 rules are established in declarative data structures, i.e., completeness graphs and tax calculation graphs; these graphs, taken collectively, capture the conditions needed to perform the tax computations required to complete a tax return for filing, and allow a minimum question set to be generated and presented to a user during preparation of an electronic return (id. ¶¶ 2, 57-61, 68, 70). The Specification explains that the tax return preparation system accesses taxpayer data, e.g., personal data and/or tax data regarding the particular taxpayer from one or more data sources (e.g., prior year tax returns, third party databases), and executes a predictive model (Spec. ¶¶ 55, 104-105). The predictive model is an algorithm, which receives the taxpayer data as inputs and outputs one or more predicted tax matters determined to be likely relevant to the taxpayer (id. ¶¶ 55, 106-109, 111-113). The system then determines tax questions to present to the taxpayer based at least in part on the predicted tax matters determined by the predictive model (id. ¶¶ 55, 110, 114-115). Consistent with this disclosure, claim 1 recites a method of predicting tax matters for a taxpayer that should be presented during preparation of an electronic tax return comprising: (1) accessing taxpayer data, including personal data and tax data regarding the taxpayer for whom the tax return is being prepared, from one or more data sources, i.e., a tax return preparation system accessing taxpayer data from one or more data sources, the tax payer data comprising at least one of personal data and tax data regarding the taxpayer, the tax return preparation system comprising a computing device having a computer processor, memory, and a tax return preparation software application executing a tax logic agent, a calculation engine, a user interface manager and a predictive Appeal 2021-002642 Application 14/484,119 11 model on the processor, the tax return preparation software application comprising a tax calculation graph structure comprising at least one node automatically populated by the tax return preparation software application, a completeness graph data structure configured with tax questions, and a shared data store in the memory and containing a schema representative of fields required to complete the tax return; [and] the calculation engine performing one or more tax calculations based on the tax calculation graph data structure using tax data read from the shared data store and updating the shared data store based on the tax calculations (limitations (a) and (b)); (2) executing a predictive model that receives the taxpayer data as input and generates one or more predicted tax matters and a score for each tax matter indicative of the probability that the tax matter is for the taxpayer, i.e., the predictive model receiving the taxpayer data, inputting the taxpayer data into the predictive model and generating one or more predicted tax matters comprising tax topics and/or tax questions for the taxpayer and a score for each predicted tax matter quantifying a probability that a respective tax matter is for the taxpayer (limitation (c)); (3) generating, by a tax logic agent, based on the predictive tax matters and scores from the predictive model, one or more suggested tax matters (e.g., tax questions, tax topics, declarative sentences or confirmations regarding the tax return) for obtaining the tax data required to complete the tax return, and determining a relevancy ranking for each of the suggested tax matters, i.e., the tax logic agent receiving the predicted tax matters and scores and reading tax data from the shared data store; the tax logic agent accessing a plurality of decision tables representing the completion graph, each decision table comprising a plurality of columns, each column corresponding to a tax question, and a plurality of rows, each row corresponding Appeal 2021-002642 Application 14/484,119 12 to a completion path for a tax rule, thereby forming a plurality of cells with each cell corresponding to a particular row and column, each cell in a respective row having a logic operator corresponding to the tax question of each cell’s respective column such that completion of each respective row is determined by the logic operators in the respective row, wherein the tax logic agent determines that an answer to a question stored in a row eliminates one or more rules or one or more columns from consideration for completing the tax return; [and] the tax logic agent analyzing the tax data from the shared data store and traversing the decision tables using the tax data and determining one or more suggested tax matters for obtaining missing tax data required to complete the tax return; the tax logic agent determining a numerical ranking for each of the suggested tax matters determined by the tax logic agent using the scores for the tax matters (limitations (d) through (g)); and (4) receiving, by a user interface manager, the suggested tax matters and relevancy rankings, determining one or more tax questions to be presented to the user, and generating an interview screen displaying the questions to be presented based at least in part on the suggested tax matters and the relevancy rankings, i.e., the user interface manager receiving the suggested tax matters and numerical rankings, determining one or more initial tax questions to present to a user for obtaining missing tax data for completing the tax return and generating an interview screen having the one or more initial tax questions to be presented to the user based at least in part upon the suggested tax matters and the numerical rankings, wherein the user interface manager is loosely connected to the tax calculation engine and is configured to determine whether the suggested tax matters from the tax logic agent will be processed and, for those suggested tax matters that are to be processed, when and how such suggested tax matters will be processed (limitation (h)). Appeal 2021-002642 Application 14/484,119 13 The Examiner determined here, as described above, that the subject matter, as recited in claim 1, falls within the “certain methods of organizing human activity” category of abstract ideas, and that the claim also recites mental processes (Final Act. 3-4). The Examiner, thus, opined that “tax preparers have been filling out forms and skipping irrelevant questions based upon the answers to other questions for many decades, and before it became common to use a computer to assist with the task” (id. at 4). The Examiner also opined that the recited “graph data structure” is “an essentially mathematical limitation and one that can . . . be done with pen and paper” and that “determining what will be processed, when and how[, as recited in limitation (h) of claim 1, is] within the normal purview of a tax-preparation professional (a person) and was so before the advent of computers” (id.). We are persuaded that even if claim 1 recites an abstract idea, as the Examiner determined, the Examiner has not sufficiently established that the claim fails to improve an existing technology (i.e., computerized tax return preparation systems) and, therefore, in the context of the 2019 Revised Guidance, that the claim fails to integrate the abstract idea into a practical application, or that the claim otherwise fails to recite significantly more than the alleged abstract idea. The Examiner determined that the judicial exception is not integrated into a practical application because “aside from the use of a general-purpose computer to perform tasks, and routine bric-a-brac of computing such as the use of a graph data structure (known, even in terms of computers, for more than half a century), an unstructured user interface, and that data might be kept in shared memory,” the claims do nothing more than manipulate data related to tax returns (Final Act. 4). Yet, the method of claim 1 goes beyond Appeal 2021-002642 Application 14/484,119 14 merely manipulating data. Via the use of predictive models and declarative data structures, i.e., a completeness graph data structure configured with tax questions and a tax calculation graph data structure, the claimed method also facilitates and supports the tailoring and personalization of the user experience in preparing an electronic tax return to the tax situation of the particular taxpayer (Spec. ¶ 55). The method, thus, effectively leverages available data regarding taxpayer personal attributes and tax related aspects, e.g., from previously filed tax returns, to determine the best tax questions and order of tax questions to present to a user in preparing a tax return (id.). Thus, rather than forcing a user to “walk[] through a set of rigidly defined user interface interview screens that selectively ask questions that are relevant to a particular tax topic or data field needed to calculate a taxpayer's tax liability” regardless of whether the topic or data field is relevant to the user (id.), the claimed tax logic agent, in combination with the claimed predictive model, calculation and completion graphs, and user interface manager, allows the tax preparation system to obtain the required tax data for the taxpayer in a more efficient and tailored fashion for the particular taxpayer. For example, where data show a large percentage of teachers have retirement accounts, and in particular 403(b) retirement accounts, this information may be used by the tax logic agent when generating its suggestions; thus, rather than asking a taxpayer, who identifies herself as a teacher, about retirement accounts generically, the suggestion can be tailored directly to a question about 403(b) retirement accounts (id. ¶ 85). In other words, for a given taxpayer attribute, it may be determined that a tax related aspect is or is not likely relevant to the particular taxpayer (id. ¶ 84 (“As an example, if the taxpayer attribute is that the taxpayer is married, the Appeal 2021-002642 Application 14/484,119 15 correlation may indicate that spouse information is relevant”)). The claimed invention, thus, allows the system to effectively personalize and tailor the tax preparation experience to the particular taxpayer, thereby minimizing the number of interview questions that are generated and output to the user and providing a simpler, more straightforward, and efficient process of preparing an electronic tax return using a tax return preparation application (see, e.g., id. ¶¶ 55, 61-67). The Examiner determined, as described above, that the judicial exception is not integrated into a practical application because, aside from the use of a general-purpose computer and routine computing, the claims do nothing more than manipulate data related to tax returns (Final Act. 4). But, the Examiner has not addressed whether the functionality described above, viewed in light of Appellant’s Specification, entails an improvement in the field of computerized tax preparation systems. And, as such, the Examiner has not established that claim 1 fails to integrate the asserted abstract idea into a practical application. We are not persuaded, on the present record, that the Examiner properly rejected claim 1 under 35 U.S.C. § 101. Therefore, we do not sustain the Examiner’s rejection. For the same reasons, we also do not sustain the Examiner’s rejection of dependent claims 2 and 5-11. Independent Claims 16 and 19 and Dependent Claims 17 and 20 Independent claim 16 is directed to a corresponding computerized system for predicting tax matters for a taxpayer that should be presented during preparation of an electronic tax return. And claim 19 recites a corresponding article of manufacture. Appeal 2021-002642 Application 14/484,119 16 We are not persuaded, for the reasons outlined above with respect to claim 1, that Examiner properly rejected independent claims 16 and 19 under 35 U.S.C. § 101. Therefore, we do not sustain the Examiner’s rejection of claims 16 and 19 and their respective dependent claims 17 and 20 for those same reasons. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 5-11, 16, 17, 19, 20 112(b) Indefiniteness 1, 2, 5-11, 16, 17, 19, 20 1, 2, 5-11, 16, 17, 19, 20 101 Eligibility 1, 2, 5-11, 16, 17, 19, 20 Overall Outcome 1, 2, 5-11, 16, 17, 19, 20 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