Ex Parte 6202052 et al

Board of Patent Appeals and Interferences

Jul 31, 2007

90006713 (B.P.A.I. Jul. 31, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________________

Ex parte SIMPLIFICATION, LLC
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Appeal 2007-0712
Reexamination Control 90/006,7131
Patent 6,202,052
Technology Center 3600
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Decided: July 31, 2007
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Before JAMESON LEE, SALLY C. MEDLEY, and JAMES T. MOORE,
Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
DECISION ON APPEAL
A. Statement of the Case
This appeal under 35 U.S.C. §§ 134 and 306 is from a final rejection
of claims 1-20 and 29-36. We have jurisdiction under 35 U.S.C. § 6(b).
The prior art relied upon by the Examiner in rejecting the claims on

1 Application filed 11 July 2003.

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appeal is:
Scott Beamer, A Marriage of Convenience. (MacInTax, MacMoney,
and Dollars & Sense for tax preparation and planning), MacUser, v3, n3,
p102(4) (March 1987).
It’s W-2 Time – But This Year There’s a Better Way to Do your Taxes,
PR Newswire, (February 1987).
Laura Lou Meadows, Faster refunds with electronic filing:
computerizing your relationship with the IRS, PC Magazine, v9, n4, p388(2)
(February 1990).
Electronic tax payment through TAXLINK discussed in IRS
procedure, standard Federal Tax Reports, Taxes on Parade, v80, n25, p4
(June 1993).
Claims 29-36 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 29-36 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention.
Claims 1, 2, 6, 8-10, 14, 15, 17-20 and 29-36 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Beamer as further supported by “It’s
W-2 Time.”
Claims 3-5, 7 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Beamer and further in view of “It’s W-2 Time.”
Claims 11-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Beamer, “It’s W-2 Time”, Meadows and “Electronic Tax
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Payment Through TAXLINK Discussed in IRS Procedure.”
The Invention
The invention relates to a system and method for collecting,
processing and reporting tax data. A tax payer provides information to an
electronic intermediary. The information provided may include, for
example, the tax payer’s social security number, so that the electronic
intermediary may electronically search databases for the tax payer’s tax data
(Specification col. 4:51-56). Alternatively, the tax payer may provide
account access information to the electronic intermediary so that the
electronic intermediary may electronically contact and collect from tax data
providers the tax payer’s tax data (Specification col. 4:56-62).
The electronic intermediary electronically processes the collected tax
data to determine the tax payer’s tax liability. The electronic intermediary
prepares a tax return using the processed data, connects to a taxing authority
and files a tax return with the taxing authority.
Procedural Posture and Related Proceedings
On 8 April 2003, patentee (hereafter “Simplification”), the real party
in interest of U.S. patent 6,202,052 (‘052) filed a patent infringement action
against Block Financial Corporation (“Block”) in the United States District
Court for the District of Delaware based on ‘052. On 11 July 2003, Block
requested reexamination of ‘052. Reexamination was granted on 2 October
2003. The civil case was stayed pending the reexamination. Simplification
appealed under 35 U.S.C. §§ 134 and 306 from a final rejection of claims
1-20 and 29-36. The appeal is the subject of this decision.
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On 24 February 2004, Simplification filed a patent infringement
action against Block in the United States District Court for the District of
Delaware based on U.S. Patent 6,697,787 (‘787), which is a child of the
involved reexamination application. On 15 March 2004, Block requested
reexamination of the ‘787 patent, which reexamination was granted on 3
June 2004. The civil action was stayed pending the reexamination.
Simplification appealed from a final rejection in that case, which is also
before us and is decided in a separate, concurrently mailed paper.
B. Issue
1) The first issue before us is whether the Examiner has sufficiently
demonstrated that claims 29-36 are unpatentable under the written
description requirement of 35 U.S.C. § 112, ¶ 1?
For the reasons that follow, we conclude that the Examiner has failed
to sufficiently demonstrate that claims 29-36 are unpatentable under the
written description requirement of 35 U.S.C. § 112, ¶ 1.
2) Has the Examiner sufficiently demonstrated that claims 29-36 are
unpatentable under 35 U.S.C. § 112, ¶ 2?
For the reasons that follow, we conclude that the Examiner has failed
to sufficiently demonstrate that claims 29-36 are unpatentable under 35
U.S.C. § 112, ¶ 2.
3) The last issue before us is whether the Examiner has sufficiently
demonstrated that there is a basis for rejecting the claims based on the prior
art relied on by the Examiner?
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For the reasons that follow, we conclude that the Examiner has failed
to sufficiently demonstrate that there is a basis for rejecting the claims based
on the prior art relied on by the Examiner.
C. Findings of Fact
The record supports the following findings of fact as well as any other
findings of fact set forth in this opinion by at least a preponderance of the
evidence.
1. Claims 1-20 and 29-36 are the subject of this appeal.
2. Claims 1-20 are original ‘787 patent claims.
3. Independent claims 1, 15, 19 and 20 are as follows:
1. A method for automatic tax reporting by an electronic
intermediary comprising:
connecting electronically said electronic intermediary to a tax
data provider;
collecting electronically tax data from said tax data provider;
processing electronically said tax data collected electronically
from said tax data provider to obtain processed tax data;
preparing electronically an electronic tax return using said
processed tax data;
connecting electronically said electronic intermediary to a
taxing authority; and
filing electronically said electronic tax return with said taxing
authority.
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15. An apparatus for automatic tax reporting by an electronic
intermediary comprising:
means for connecting electronically said electronic intermediary
to a tax data provider;
means for collecting electronically tax data from said tax data
provider;
means for processing electronically said tax data collected
electronically from said tax data provider to obtain processed tax data;
means for preparing electronically an electronic tax return using
said processed tax data;
means for connecting electronically said electronic intermediary
to a taxing authority; and
means for filing electronically said electronic tax return with
said taxing authority.
19. A computer-readable medium embodying a computer
program for automatic tax reporting by an electronic intermediary,
said computer program comprising code segments for:
connecting electronically said electronic intermediary to a tax
data provider;
collecting electronically tax data from said tax data provider;
processing electronically said tax data collected electronically
from said tax data provider to obtain processed tax data; and
preparing electronically an electronic tax return using said
processed tax data;
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connecting electronically said electronic intermediary with a
taxing authority; and
filing electronically said electronic tax return to said taxing
authority.
20. A method for automatic tax reporting by an electronic
intermediary comprising:
connecting electronically said electronic intermediary to a tax
data provider;
collecting electronically tax data from said tax data provider;
processing electronically said tax data collected electronically
from said tax data provider to obtain processed tax data; and
preparing electronically an electronic tax return using said
processed tax data.
4. Each of claims 29-36 were first presented during
reexamination.
5. Each one of claims 29-36 are independent claims.
6. Independent claims 29-36 are variations of and similar to the
original independent claims 1, 15, 19 and 20, but differ with the added
language:
(1) “wherein said tax data collected electronically is not
collected manually, and wherein said tax data collected electronically is not
manually entered onto said electronic tax return” (claims 29-32), and
(2) the tax data is collected “automatically” (33- 36).

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The 112, ¶ 1 and ¶ 2 rejections
7. The Examiner rejected claims 29-36 under 35 U.S.C. 112, ¶ 1,
as the Specification allegedly does not provide the intended metes and
bounds of:
1) the electronic collection of tax data wherein the tax data
collected electronically is not collected manually or manually entered
onto said electronic tax return (as recited in claims 29-32) (Final
Rejection 5 and Answer 5-6);
2) the automatic and electronic collection of tax data (as recited
in claims 33-36) (Final Rejection 12 and Answer 6).
8. The Examiner also argues that since the Specification describes
that the invention may be implemented using existing software, such as
TurboTax®, that the demarcation between one off-the-shelf software
program being integrated into another piece of software is not made clear by
the Specification (Final Rejection 11 and Answer 5 and 40-41).
9. Simplification’s Specification states:
Hence, with the electronic collection of tax data as in step 12,
the invention eliminates the current requirement that a taxpayer
manually collect the tax data, eliminates the current requirement that a
taxpayer manually enter such tax data onto a tax return or into a
computer, and eliminates the need for all, or virtually all, intermediate
hard copies of tax data, thereby saving paper, time, and cost.

In step 13, the electronic intermediary processes the tax data
obtained electronically from the tax data providers in step 12. In the
present invention, step 13 can be implemented using a computer
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program similar to the computer programs currently available in the
market place, such as TurboTax, which is a registered trademark of
Intuit, Inc. Although step 13 can be implemented with current
technology, the current technology requires that the tax data and other
information relevant to the taxpayer be inputted manually. With the
present invention, this information is obtained as described above in
steps 11 and 12. (‘052 col. 6:23-41).

10. The Specification also describes the following:
Alternatively, the electronic intermediary can connect
electronically with the IRS, and receive the tax data from the IRS. In
this alternative embodiment, the tax data providers have already
provided the tax data to the IRS and the electronic intermediary
obtains the tax data from the IRS, and not the tax data providers.
Further, the electronic intermediary can connect electronically with
other taxing authorities possessing the taxpayer’s tax data. In this
case, the electronic intermediary receives the tax data from the taxing
authorities instead of the tax data providers. (‘052 col. 6:13-23).

11. The Examiner rejected claims 29-36 under 35 U.S.C. 112, ¶ 2 for
the identical reasons articulated in connection with the 112, ¶ 1 rejection
(Final Rejection 12-15 and Answer 6-9).
12. Simplification argues that the Examiner’s rejections are improper
since any rejection made under 35 U.S.C. 112, ¶ 1 should be limited to only
the amended or added language (Br. 14-15).
13. The Examiner responded and argued that the amendments alter
the scope of the claims as a whole and that the rejection is proper (Answer
36).
14. In response to Simplification’s arguments, the Examiner agrees
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that the Specification does provide support for the electronic transmission of
data and software processing using the data, but argues that the Specification
fails to explain in detail how this is accomplished (Answer 36).
The rejection of Claims 1, 2, 6, 8-10, 14, 15, 17-20 and 29-36 as being
anticipated by Beamer and “It’s W-2 Time”
15. The Examiner relied on the “It’s W-2 Time” article for the
purpose of showing “various characteristics of MacInTax that are deemed to
be inherent to the version of MacInTax described in Beamer.”
16. Specifically, the Examiner relied on “It’s W-2 Time” to
demonstrate that the MacInTax described in Beamer performs all tax
calculations on the computer (Final Rejection 15-16 and Answer 9-10).
17. The Examiner found that Beamer describes connecting
electronically an electronic intermediary to a tax data provider and collecting
electronically tax data from the tax data provider (e.g., Final Rejection 16-17
and Answer 10-12).
18. Specifically, the Examiner found with respect to independent
claims 1, 10, 31, 32, 34, 35, 37-40 (directing attention to Beamer ¶¶ 3, 4, 6,
15, 16, 23, and 26) that:
The tax preparation software, e.g., MacInTax, can electronically
connect to and download relevant financial information from a
bank via a home accounting program, e.g., Dollars & Sense.
This downloaded information is used to assist in completing
one’s tax return. Completion of an IRS tax form is expressly
disclosed by Beamer; therefore, by using data downloaded from
a bank to complete the IRS tax form, said data qualifies as tax
data since it provides information that is required to complete
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one’s tax return (e.g., Final Rejection 16 and Answer 10).

19. The following is from ¶ 3 of Beamer:
One day in the not-too-distant future Jan and Jim
Smithwick will have their employers transmit their salaries
electronically directly into their personal bank accounts. They
will be able to download their bank records into their personal
financial software. That program can lien pass the information
to a tax preparation program.

20. Moneyline, the program that allows electronic access to a bank is
described as follows:
Moneyline allows you to communicate directly with your bank’s
computer system. Many transactions can be directly fed by the bank’s
computer into Dollar & Sense accounts. This reduces the drudgery of
retyping data, increases accuracy and gives convenient access to bank
information at any time, not just when the statement arrives. (¶ 26).

21. Beamer describes Dollars & Sense as a home accounting program
that keeps track of personal finances (¶ 1 and 6).

22. Beamer also describes the following with respect to home
accounting software programs:
Grooming your files at the end of the year is a must. If your
accounts balance at the end of the year, you are in pretty good shape
but transactions can still be in the wrong categories. At tax time it is
necessary to review all transactions one by one, making sure that each
is in the correct category and correctly marked as taxable or
nontaxable. It is best to empty out the “Misc.” and “Cash” accounts
as much as possible.
Hopefully, before tax time rolls around you will have been
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practicing with report templates all year. This is the most difficult
part of using these programs, especially with MacMoney, because
there are so many variables to deal with. You must make a year end
report that will correctly summarize the tax data from your files. If
you have been using the suggested tax accounts from the program,
this shouldn’t be too hard (Beamer ¶¶ 36 and 37).

23. Simplification argued that Beamer fails to describe that the tax
data provider, e.g., the bank, provides tax data as follows:
Contrary to the assertion in the Final Office Action, the bank
record and the salary deposit indicated by Beamer are not “tax data.”
Beamer teaches that the bank record indicates salary of the taxpayer.
Beamer, ¶ 3. This salary entry in the bank record is the net pay of the
taxpayer. One of ordinary skill in the art of taxes would know that
this salary entry, by itself, neither includes nor suggests the
taxpayer’s gross income, the tax withholdings taken from the
taxpayer’s gross income by the taxpayer’s employer, and other
deductions, such as, for example, retirement deductions, transportation
deductions, and parking deductions, all of which are used to determine
the taxpayer’s taxable income. Further, one of ordinary skill in the art
of taxes would know that, given that the employer withheld money
from the taxpayer’s income, the tax return including only the salary
deposit indicated in the bank record of Beamer would be incorrect
because that tax return would not include the taxpayer’s taxable
income. Only through manual input, then, could the taxpayer’s
taxable income be obtained. Hence, the downloaded bank record
disclosed in Beamer, which indicates the salary deposit of the
taxpayer, is not “tax data” because, by itself, the salary entry in the
bank record cannot be used to prepare the tax return of the taxpayer.
(Br. 45) (emphasis by Simplification).

24. The Examiner responded and argued that:
Beamer discloses that the tax preparation software, e.g.,
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MacInTax, can electronically connect to and download relevant
financial information from a bank via a home accounting program,
e.g., Dollars & Sense (¶¶ 3, 4, 6, 15, 16, 23, 26). This downloaded
information is used to assist in completing one’s tax return.
Completion of an IRS tax form is expressly disclosed by Beamer;
therefore, by using data downloaded from a bank to complete the IRS
tax form, said data qualifies as tax data since it provides information
that is required to complete one’s tax return. Beamer ultimately
utilizes the downloaded bank statement information to electronically
prepare a tax return, thereby addressing both the spirit and literal
interpretation of the claimed invention. Furthermore, Patent Owner’s
independent claims recite “collecting electronically tax data from said
tax data provider.” Since the collected tax data is not referred to as
“said tax data,” it is not necessarily required that the collected tax data
be the type of tax data expressly recited as possessed by the tax data
provider. (Answer at 44-45).

25. The Simplification Specification gives examples of the type of
data that is considered “tax data” as follows:
This information [data needed to compute the tax payer’s liability]
includes: IRS Forms W-2 from their employers; IRS Forms 1099 from
their banks; each mutual fund in which interests are held, each broker
in respect of dividends, interest and gross brokerage proceeds, and
other persons from whom payments are received; IRS Forms 1098 in
respect of residential mortgage interest paid; and canceled checks or
other acknowledgments from charitable organizations (‘052, col.
2:21-29).

Obviousness rejection
26. The Examiner rejected dependent claims 3-5, 7 and 16 based on
Beamer and further supported by “It’s W-2 Time” as applied in the
anticipation rejection and also based on Official Notice taken by the
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Examiner (Final Rejection 38-40 and Answer 32-33).
27. The Examiner rejected dependent claims 11-13 based on Beamer
and further supported by “It’s W-2 Time” as applied in the anticipation
rejection and also based on Meadows and “Electronic Tax Payment Through
TAXLINK Discussed in IRS Procedure.” (Final Rejection 40-42 and
Answer 33-35).
D. Principles of Law
35 U.S.C. § 112, ¶ 1
Adequate written description means that, in the Specification, the
applicant must “convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the [claimed]
invention.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19
USPQ2d 1111, 1117 (Fed. Cir. 1991). The written description requirement
is separate and distinct from the enablement requirement. Id.
35 U.S.C. § 112, ¶ 2
A claim is indefinite if, when read in light of the Specification, it does
not reasonably apprize those skilled in the art of the scope of the invention.
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342, 65
USPQ2d 1385, 1406 (Fed. Cir. 2003). Specifically, if the scope of the
invention sought to be patented cannot be determined from the language of
the claims, the Specification or the teachings of the prior art with a
reasonable degree of certainty, a rejection of the claims under 35 U.S.C.
§ 112, second paragraph is appropriate. In re Wiggins, 488 F.2d 538, 541,
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179 USPQ 421, 423 (CCPA 1973).

35 U.S.C. § 102
“A person shall be entitled to a patent unless …. the invention was
patented or described in a printed publication in this or a foreign country or
in public use or on sale in this country, more than one year prior to the date
of the application for patent in the United States” 35 USC § 102(b).
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either expressly or inherently.
Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053
(Fed. Cir. 1987).
35 U.S.C. § 103
“A patent may not be obtained though the invention is not identically
disclosed or described as set forth in section 102 of this title, if the
differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains.” 35 USC § 103(a).
In determining whether claimed subject matter would have been
obvious we take into consideration (1) the scope and content of the prior art,
(2) any differences between the claimed invention and the prior art, (3) the
level of skill in the art, and (4) any relevant objective evidence of
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obviousness or non-obviousness. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1731, 82 USPQ2d 1385, 1389 (2007), Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17-18 (1966).
E. Analysis
The 112, ¶¶ 1 and 2 rejections
Simplification argues that the Examiner failed to follow the
requirements for reexamination proceedings and that the rejections of claims
29-36 under 35 U.S.C. § 112, ¶¶ 1 and 2 were improper (FF 12). The
Examiner argued that the amendatory language changed the scope of the
claims 29-36 and therefore the rejection is proper (FF 13). We need not
decide who is correct, since even considering the Examiner’s rejections we
cannot sustain the rejections made.
We first address the arguments made in the context of the written
description requirement. The Examiner initially bears the burden to
demonstrate that the Specification fails to provide written description
support for the claimed invention. Inherent in that demonstration is that the
Examiner clearly articulates a reason for making the rejection. In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). In order to demonstrate that
a claim term lacks written description support, the burden is initially on the
Examiner to demonstrate that the inventor did not have possession of the
claimed invention.
The Examiner argued that there is not a clear picture of the intended
metes and bounds of the electronic collection of tax data wherein the tax
data collected electronically is not collected manually or manually entered
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onto said electronic tax return as recited in claims 29-32 (FF 7(1)). The
Examiner acknowledges that portion of the Specification that describes this
feature, yet fails to explain why that description fails to convey to one of
ordinary skill in the art that the inventor had possession of the claimed
feature. For example, the Specification states that “the invention eliminates
the current requirement that a taxpayer manually collect the tax data,
eliminates the current requirement that a taxpayer manually enter such tax
data onto a tax return or into a computer…” (FF 9). That description is very
similar to the claim language that the Examiner argues does not have written
description support. Yet, the Examiner has failed to clearly articulate why
the passage does not support the claim language.
The Examiner also argued that the Specification does not render a
clear picture of the metes and bounds of the automatic and electronic
collection of tax data. Again, the Examiner has failed to articulate in any
meaningful way why the description discussed immediately above or that the
Specification as a whole fails to convey to one of ordinary skill in the art that
the inventor had possession of the claimed feature. For example, the
Specification describes that once the tax payer provides account or
identification data to the intermediary, the intermediary then may
electronically search databases for the tax payer’s tax data (Specification
col. 4:51-56), or the electronic intermediary may electronically contact and
collect from the tax data providers the tax payer’s tax data (Specification col.
4:56-62). The Examiner has failed to clearly articulate why such
descriptions fail to convey to one of ordinary skill in the art that the inventor
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had possession of automatic and electronic collection of tax data.
The Examiner also found that since the Specification describes that
the invention may be implemented using existing software, such as
TurboTax®, that the demarcation between one off-the-shelf software
program being integrated into another piece of software is not made clear by
the Specification (FF 8). The Examiner’s position is not persuasive. The
Specification states that “step 13 can be implemented using a computer
program similar to the computer programs currently available in the market
place” such as TurboTax® (FF 9). The Specification makes clear that the
software may be similar to what is available in the market place, but need
not be exactly the same software.
In response to Simplification’s arguments, the Examiner apparently
agrees that the Specification does provide written description support for the
electronic transmission of data and software processing using the data, but
argues that the Specification fails to explain in detail how this is
accomplished (FF 15).
Whether one of ordinary skill in the art can make or use a described
invention, e.g., enablement, is a separate and distinct requirement of 35
U.S.C. § 112, ¶ 1. The test for enablement is based on undue
experimentation, where several underlying factual findings need be made.
In re Wands, 858 F.2d 731, 8 USPQ2d 1400. The Examiner has failed to
make any such findings. We need not and will not speculate as to how the
Examiner’s rejections may possibly fit into an enablement scenario. The
Examiner has the initial burden to succinctly articulate a rationale for
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rejecting the claims.
The Examiner’s rejection of claims 29-36 based on the second
paragraph of 35 U.S.C. § 112 is verbatim the same as the written description
rejection. In the context of 35 U.S.C. § 112, second paragraph, the
Examiner has failed to explain why the scope of the invention sought to be
patented cannot be determined from the language of the claims, the
Specification or the teachings of the prior art with a reasonable degree of
certainty, as required. In re Wiggins, 488 F.2d 538, 541, 179 USPQ 421,
423 (CCPA 1973).
As already discussed above, at the heart of the Examiner’s rejections
is that the Specification does not provide enough information such that one
of ordinary skill in the art would be able to make or use the invention.
However, whether a Specification conveys enough information to enable
one of ordinary skill in the art to make or use an invention is a different and
separate requirement from the written description requirement or the
definiteness requirement. In that respect, and as already explained, the
Examiner has failed to make the requisite findings to support the assertions
made, e.g., that one of ordinary skill in the art would not know how to make
or use the invention without undue experimentation.
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The prior art rejections
The Examiner finally rejected all of the independent claims as being
anticipated under 35 U.S.C. § 102(b) by Beamer and further supported by
the disclosure of “It’s W-2 Time.” The Examiner relied on Beamer to teach
collecting electronically tax data from said tax data provider.
An issue raised by Simplification is whether Beamer describes that the
information collected from the tax data provider, e.g., bank, is “tax data.”
For the reasons that follow, the Examiner has failed to sufficiently establish
that Beamer describes that the information collected from the tax data
provider, e.g., bank, is “tax data,” and therefore the rejection of all of the
claims 1-20 and 29-36 is reversed.
In reviewing both the Examiner’s and Simplification’s arguments, it
appears that both agree that “tax data” is data that is used to determine a tax
payer’s liability (FFs 18 and 23), which is consistent with the Specification
description of tax data (FF 25). The specification describes examples of “tax
data” as IRS Forms W-2 from their employers and IRS Forms 1099 from
their banks (FF 25). Simplification disagrees that Beamer describes that the
information obtained from the bank, e.g., tax data provider, is data that is
used to determine a taxpayer’s liability.
Simplification argues that the information obtained from the tax data
provider, e.g., the bank, is described as “salary data” and that “salary data”
does not indicate the net pay of the taxpayer, which is necessary to
determine the taxpayer’s taxable income (FF 23). Specifically,
Simplification argues that the Beamer bank record indicates the salary of the
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taxpayer. Simplification further argues that the bank record salary entry is
the net pay of the taxpayer, and that the salary entry data would not include a
taxpayer’s taxable income, or tax liability (FF 23).
We understand Simplification to argue that the information contained
on a bank statement as described in Beamer would show a record of the
amount of money directly deposited into a taxpayer’s account, which
Simplification refers to as “salary data.” We further understand
Simplification to argue that a monthly bank record showing the amount of
money directly deposited would not be “tax data” since one could not
determine the taxable income from the data showing the amount deposited.
Instead, Simplification maintains that Beamer’s direct deposit information is
not useful information for determining a tax payer’s liability.
In support of the argument, Simplification directs attention to
paragraph 3 of Beamer. That passage is as follows:
One day in the not-too-distant future Jan and Jim
Smithwick will have their employers transmit their salaries
electronically directly into their personal bank accounts. They
will be able to download their bank records into their personal
financial software. That program can lien pass the information
to a tax preparation program.

This passage tends to support Simplification’s argument that the only
type of data that is specifically described is “salary” information, or the
amount of money directly deposited into the taxpayer’s bank account from
an employer. From the above passage, one would understand that what an
employer is electronically directly transmitting to the Smithwick’s bank
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accounts is the amount of money owed to them from their employer. Such
direct deposits are typically made on a weekly, bi-weekly or monthly basis.
That amount would be after all tax deductions, retirement deductions, social
security deductions, and any other deductions are made. There is no
indication from the above passage that the amount deposited directly into the
Smithwick’s account is the type of data that is typically used to determine
one’s tax liability. For example, a monthly bank report showing direct
deposits from an employer is a snap shot of what occurred in a given month
and would not be a complete accurate summary of a taxpayer’s total net
income for a year, information that would be found on a W-2 form, e.g., the
type of data that the Specification describes as being “tax data.” Even if the
direct deposit salary amount on a bank statement is assumed to be passed to
a tax preparation program that does not turn it into “tax data” without any
demonstration that the tax preparation software indeed uses that data to
determine one’s tax liability.
The Examiner’s response to Simplifications’ argument is not
sufficient to refute the Applicants’ arguments. The Examiner is silent with
respect to Simplification’s specific argument that Beamer describes a
monthly bank statement that would only include a direct deposit amount
from an employer, and that such information would not be enough or helpful
to determine a taxpayer’s tax liability. Instead, the Examiner merely repeats
what was stated in the rejection, e.g., that Beamer ultimately utilizes the
downloaded bank statement information to electronically prepare a tax
return. However, the Examiner has failed to direct attention to where in
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Beamer that the conclusion finds support, or explain how Beamer
necessarily or inherently describes the feature. Such a conclusory response
is not sufficient to overcome the argument made by Simplification and what
Beamer describes in paragraph 3.
The Examiner argues that:
Completion of an IRS tax form is expressly disclosed by
Beamer; therefore, by using data downloaded from a bank to
complete the IRS tax form, said data qualifies as tax data since
it provides information that is required to complete one’s tax
return (FF 24).

The Examiner has failed to show that Beamer contemplates “using
data downloaded from a bank to complete the IRS tax form” as argued. The
Examiner places much emphasis on the following passage in Beamer to
support the assertion that Beamer describes “tax data” e.g., data that can be
used to complete a tax form.
Moneyline allows you to communicate directly with your
bank’s computer system. Many transactions can be directly fed
by the bank’s computer into Dollar & Sense accounts. This
reduces the drudgery of retyping data, increases accuracy and
gives convenient access to bank information at any time, not
just when the statement arrives. (Beamer ¶26).

The references to “bank records” and “statement” from the above
passage are not specific as to the type of data that is contained on the bank
record or statement. The only reference to the type of data that may be
contained on the record or statement is that of the money that is deposited
into the Smithwick’s bank account from their employer as previously
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24
discussed. The Examiner has also failed to demonstrate that the data
collected from the bank must necessarily or inherently be tax data as argued
(FF 24).
Beamer focuses on tax preparation. However, Beamer also focuses in
detail on home accounting software too. There is approximately a full page
of the three page article describing the general advantages of using a home
accounting software program. Within that description is the above
paragraph that discusses the link between Moneyline and a home accounting
software program. The downloaded bank information is to the home
accounting or personal financial software, not directly to the MacInTax or
tax software. As described in Beamer, home accounting software such as
the Dollars & Sense software tracks data that is otherwise not relevant to a
tax payer’s tax liability. For example, direct deposit data, e.g., the amount of
money that is deposited from an employer into an employee’s bank account
may be useful in the context of home accounting software, for the purpose of
budgeting and paying one’s bills, but is not the type of data that a tax payer
uses to determine tax liability as already discussed. The home accounting
software of Beamer tracks data that would appear to have nothing to do with
a tax payer’s tax liability. For example, Beamer describes manipulating the
home accounting software files in preparation for determining tax liability.
Beamer states that “[a]t tax time it is necessary to review all transactions one
by one, making sure that each is in the correct category and correctly marked
as taxable or nontaxable” (FF 22). That statement supports the notion that
data collected through the home accounting software such as Dollars &
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25
Sense is not limited to tax data. Here, the Examiner has failed to sufficiently
demonstrate that the data obtained from the bank is anything more than
information that a taxpayer would use for household budgeting purposes,
which data the Examiner has failed to demonstrate would in fact be used to
determine a tax payer’s tax liability.
For all of these reasons, the Examiner’s determination that the data
collected from the bank must necessarily or inherently be data that is used to
process a tax payer’s liability is not supported by record evidence.
As applied by the Examiner (FF 26 and 27) none of the other
references make up for the deficiencies of Beamer.
For all of these reasons, we will not sustain the Examiner’s rejection
of the claims based on the prior art of record.
F. Decision
Upon consideration of the record, and for the reasons given, the
Examiner’s rejections are reversed.
The Examiner’s rejection of claims 29-36 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
reversed.
The Examiner’s rejection of claims 29-36 under 35 U.S.C. § 112,
second paragraph, as being indefinite is reversed.
The Examiner’s rejection of claims 1, 2, 6, 8-10, 14, 15, 17-20 and 29-
36 under 35 U.S.C. § 102(b) as being anticipated by Beamer as further
supported by “It’s W-2 Time” is reversed.
The Examiner’s rejection of claims 3-5, 7 and 16 under 35 U.S.C.
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§ 103(a) as being unpatentable over Beamer and further in view of “It’s W-2
Time” is reversed.
The Examiner’s rejection of claims 11-13 under 35 U.S.C. § 103(a) as
being unpatentable over Beamer, “It’s W-2 Time,” Meadows and
“Electronic Tax Payment Through TAXLINK Discussed in IRS Procedure”
is reversed.

REVERSED

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