Intuit Inc.

Patent Trials and Appeals Board

Nov 13, 2020

14528719 - (D) (P.T.A.B. Nov. 13, 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.
14/528,719 10/30/2014 Avanish C. Pathak 327696-000030 8515
155998 7590 11/13/2020
DLA PIPER LLP US - Intuit
ATTN: PATENT GROUP
11911 Freedom Dr.
Suite 300
RESTON, VA 20190
EXAMINER
OJIAKU, CHIKAODINAKA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
11/13/2020 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):
PatentProsecutionRes@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AVANISH C. PATHAK, GAURAV DOON,
ROBERT E. BAMFORD, VIJOY J. CARO, and NIKOLAOS IOANNOU
____________

Appeal 2020-004539
Application 14/528,719
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, 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 28, 30–42, 44, and 45. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

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 December 2, 2019) and the Examiner’s Answer (“Ans.,” mailed
January 22, 2020) and Final Office Action (“Final Act.,” mailed August 21,
2019). Appellant identifies Intuit, Inc. as the real party in interest (Appeal
Br. 2).
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CLAIMED INVENTION
The claimed invention relates to “computer-implemented methods for
collaborative tax return preparation” (Spec. ¶ 1).
Claim 28, reproduced below with bracketed notations added, is the
sole independent claim and representative of the subject matter on appeal:
28. A computer-implemented method for filling in a
form using inputs from multiple computing devices, the method
comprising:
[(a)] a host computer establishing a collaborative
electronic form completion session between a first computing
device and a second computing device through at least one
network, wherein the first computing device displays a first local
version of an electronic form and the second computing device
displays a second local version of the electronic form including
different data from the first local version;
[(b)] the host computer receiving a first input from the
first computing device, the first input identifying a field in the
first local version of the electronic form, the first input being
generated by a user selection of the field in the first local version
of the electronic form displayed in a user interface of the first
computing device;
[(c)] the host computer receiving second user
information from the second computing device, the second user
information including a second user entry for the field identified
in the first input, the second user information being generated by
a user entry in the field in the second local version of the
electronic form displayed in a user interface of the second
computing device;
[(d)] the host computer generating a command
configured to insert the second user entry into the field in the first
local version of the electronic form in response to the first input;
and
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[(e)] the host computer sending the command to the first
computing device through the at least one network, thereby
causing the first computing device to display the second user
entry in the field in the first local version of the electronic form
displayed in the user interface of the first computing device.
REJECTION
Claims 28, 30–42, 44, and 45 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
ANALYSIS
Under 35 U.S.C. § 101, a claim is patent eligible if it claims a “new
and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include 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
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nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
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, 57
(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

2 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to public comments.
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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
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.
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “an abstract idea of tax return
preparation in which [the] process is executed between the transacting
devices” (Final Act. 4; see also Ans. 5 (“The invention (claims) is directed
to an abstract idea of tax return preparation in which data [are] submitted
and retrieved for display on the requesting device.”)). The Examiner
reasoned that the claimed steps describe “the concept of gathering
information and populating the electronic form,” and that “[a]ll of these
concepts relate to data storage and exchange in which different types of data
are accessed and exchanged between transacting parties or devices” (Final
Act. 4). The Examiner also opined that “[t]he recitation of a local version
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suggests extra-solution activity and not an integration of a practical
application” (id.).
Specifically addressing independent claim 28, the Examiner
determined that the claim recites “populating entered tax return data by
parties” (Final Act. 5), which the Examiner concluded is a certain method of
organizing human activities, and, therefore, an abstract idea, because the
claim recites “commercial or legal interactions, namely transaction data
processing” (Final Act. 6). The Examiner also determined that the abstract
idea is not integrated into a practical application (id.), and that claim 28 does
not include additional elements sufficient to amount to significantly more
than the abstract idea itself (id. at 6–7).
Independent Claim 28
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.
Here, the Specification is titled “METHODS, SYSTEMS AND
COMPUTER PROGRAM PRODUCTS FOR COLLABORATIVE TAX
RETURN PREPARATION,” and states that embodiments of the claimed
invention “are directed to collaborative tax return preparation” (Spec. ¶ 20).
The Specification describes that “at a first user’s request, a tax return
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preparation system can establish a collaborative tax preparation session
between first and second users” (id.). During the session, the system can
receive tax-related information from the second user, and can send the
received tax-related information to the first user to aid the first user’s tax
preparation (id.). Therefore, according to the Specification, “[t]he described
systems and methods facilitate the preparation of tax returns by the first and
second users, thereby increas[ing] the likelihood of the users completing
their respective tax returns, and providing a substantial improvement to
existing tax return preparation systems” (id.).
Referring to Figure 1, the Specification describes that, according to
one embodiment, a collaborative tax return preparation system includes or
involves “three operatively connected software programs, applications or
modules”: (1) a first user program 102 running on a first user computer 108;
(2) a second user program 104 running on a second user computer 110; and
(3) a collaborative tax return preparation program 106 running on a host
computer 112. A first network 114 connects first user computer 108 and
host computer 112, and a second network 116 connects second user
computer 110 and host computer 112 (Spec. ¶ 23).
The Specification describes, with reference to Figure 15, that, in
operation, the first user logs into a tax return preparation program at first
user computer 108, and requests that host computer 112 establish a
collaborative tax return preparation session with the second user (id. ¶ 46).
In response, host computer 112 sends a message to second user
computer 110 inviting the second user to participate in the collaborative tax
return preparation session (id. ¶ 48). If the second user agrees to join the
session, host computer 112 establishes the session by connecting first and
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second user computers 108, 110 through first and second networks 114, 116
and host computer 112 (id. ¶ 50). At step 414 (Figure 15), the second user
logs into the tax return preparation program running on second user
computer 110 and sends tax-related information, e.g., completed tax forms
in electronic format, to host computer 112; host computer 112 optionally
masks a portion of the tax-related information and sends the optionally
masked tax-related information to the first user at first user computer 108,
who may use the information as a model in preparing his or her tax return
(id. ¶ 51).
The Specification describes that, in another embodiment shown in
Figure 16, after the second user logs into the tax return preparation program,
the first user, at step 422, selects a form field in the tax return preparation
software running on first user computer 108, e.g., by pressing a keyboard
key associated with the form field, clicking over the form field, or
“mousing” over the form field (Spec. ¶ 54). At step 424, host computer 112
obtains tax-related information from the second user corresponding to the
selected form field (id. ¶ 55), and at step 418, sends the tax-related
information, which may be optionally masked, to the first user at first user
computer 108 (id. ¶ 56).
Consistent with this disclosure, claim 28 recites a method for filling in
a form using inputs from multiple computing devices comprising:
(1) establishing, by a host computer, a collaborative electronic form
completion session between a first computing device displaying a first local
version of an electronic form and a second computing device displaying a
second local version of the electronic form, i.e.,
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a host computer establishing a collaborative electronic
form completion session between a first computing device and a
second computing device through at least one network, wherein
the first computing device displays a first local version of an
electronic form and the second computing device displays a
second local version of the electronic form including different
data from the first local version
(step (a)); (2) receiving, by the host computer, from the first computing
device, a first input identifying a field in the first local version of the
electronic form, i.e.,
the host computer receiving a first input from the first
computing device, the first input identifying a field in the first
local version of the electronic form, the first input being
generated by a user selection of the field in the first local version
of the electronic form displayed in a user interface of the first
computing device
(step b)); (3) receiving, by the host computer, from the second computing
device, second user information, generated by user entry in the identified
field in the second local version of the electronic form, i.e.,
the host computer receiving second user information from
the second computing device, the second user information
including a second user entry for the field identified in the first
input, the second user information being generated by a user
entry in the field in the second local version of the electronic
form displayed in a user interface of the second computing
device
(step (c)); and (4) inserting the second user information into the field in the
first local version of the electronic form, i.e.,
the host computer generating a command configured to
insert the second user entry into the field in the first local version
of the electronic form in response to the first input; and
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the host computer sending the command to the first
computing device through the at least one network, thereby
causing the first computing device to display the second user
entry in the field in the first local version of the electronic form
displayed in the user interface of the first computing device
(steps (d) and (e)).
We are persuaded that even if claim 28 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., 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 here, as described above, that the claims are
directed to the abstract idea of tax return preparation, and that “[t]he claimed
steps describe the concept of gathering information and populating the
electronic form” (Final Act. 4). Yet, the method of claim 28 goes beyond
merely gathering information and populating an electronic form. Via the
host computer, the claimed method also facilitates and supports
collaboration, in substantially real-time, between two users, who
independently are completing/editing local versions of the same electronic
form. The claimed invention, thus, allows, for example, second user
information entered in an identified field of the second local version of the
form, which is specifically requested by the first user, to be propagated into
the identified field of the first local version of the form. Thus, rather than
sending the entire form back and forth between the two devices, by
generating a command and sending that command to the first computing
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device, the host computer causes the first computing device’s form to
include the second user entry provided by the second computing device.
The Examiner opines that the recited abstract idea is not integrated
into a practical application because “the claim[, i.e., claim 28,] only recites
generic computer components (e.g.[,] general purpose computer systems and
processors) to receive/modify existing information entered” (Final Act. 6;
see also Ans. 6 (concluding that “[a]lthough there may be a display and
retrieval of auto populated data based on instructions input into a system,
absent is any indication . . . that there is an improvement in the way data is
populated by computing devices[,] for example, in the way the prepopulated
data is synchronized. Absent is any evidence of an integration of a practical
application.”)). But, the Examiner has not addressed whether the
functionality described above, viewed in light of Appellant’s Specification,
entails an improvement in field of tax preparation systems. And, as such,
the Examiner has not established that claim 28 fails to integrate the asserted
abstract idea into a practical application. Therefore, we do not sustain the
Examiner’s rejection of claim 28 under 35 U.S.C. § 101.
Dependent Claims 30–42, 44, and 45
Claims 30–42, 44, and 45 depend, directly or indirectly from
independent claim 28. We do not sustain the Examiner’s rejection of these
dependent claims under 35 U.S.C. § 101 for the same reasons set forth above
with respect to independent claim 28.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
28, 30–42,
44, 45
101 Eligibility 28, 30–42,
44, 45

REVERSED