Thomson Reuters Global ResourcesDownload PDFPatent Trials and Appeals BoardFeb 3, 20212020004752 (P.T.A.B. Feb. 3, 2021) Copy Citation 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. 14/010,351 08/26/2013 Paul David Bartlett TRCP.P0028US/1000223308 7953 29053 7590 02/03/2021 NORTON ROSE FULBRIGHT US LLP 2200 ROSS AVENUE SUITE 3600 DALLAS, TX 75201-7932 EXAMINER CHANG, EDWARD ART UNIT PAPER NUMBER 3696 NOTIFICATION DATE DELIVERY MODE 02/03/2021 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): doipdocket@nortonrosefulbright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL DAVID BARTLETT, STEVEN M. LYNN, MAUNANG B. MEHTA, BINOD K. NAIR, and KUMAR S. UNNIKRISHNAN Appeal 2020-004752 Application 14/010,351 Technology Center 3600 Before ELENI MANTIS MERCADER, LINZY T. McCARTNEY, and MATTHEW J. McNEILL, Administrative Patent Judges. McCARTNEY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1, 4–7, 9–12, 14–22, 26, and 27. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies the real party in interest as Thomson Reuters Global Resources Unlimited Company. Appeal Brief 2, filed January 21, 2020 (Appeal Br.). Appeal 2020-004752 Application 14/010,351 2 BACKGROUND This patent application concerns “calculating estimated income tax payments for legal entities.” Specification ¶ 2, filed August 26, 2013. Claim 19 illustrates the claimed subject matter: 19. A system comprising: one or more processors; a display in communication with the one or more processors; a calculation engine that, when executed by the one or more processors, performs operations including: determining income information associated with one or more entities and tax information for a jurisdiction associated with the one or more entities, generating a calculation flow sequence configured to calculate an estimated tax payments for at least one of the one or more entities, the calculation flow sequence including a plurality of parts configured to be automatically executed according to the calculation flow sequence, wherein a first subset of data of at least one of the income information and the tax information is associated with a first number of parts of the calculation flow sequence, mapping an equation to each part of the plurality of parts of the calculation flow sequence, calculating the estimated tax payment for a location in the jurisdiction based at least in part on the income information and the tax information by automatically executing a second number of parts of the calculation flow sequence, generating a graphical user interface a (GUI) control for controlling execution of the calculating the estimated tax payments, the GUI control including at least one trigger point, the at least one trigger point configured to automatically detect a change in the at least one of the Appeal 2020-004752 Application 14/010,351 3 income information or the tax information, wherein the controlling execution of the calculating the estimated tax payments includes: detecting, via the at last one trigger point, a change in the at least one of the income information and the tax information; and invoking, in response to the detecting the change in the at least one of the income information and the tax information, an instance of the calculation engine configured to respond to the change, wherein responding to the change includes: automatically determining that the change in the at least one of the income information and the tax information affects the first subset of data; automatically determining that the change in the at least one of the income information and the tax information does not affect a second subset of data of the at least one of the income information and the tax information; and calculating an additional estimated tax payment for the location based at least in part on the first subset of data and exclusive of the second subset of data, by automatically executing the first number of parts of the calculation flow sequence, wherein the first number is less than the second number; and a print engine that, when executed by the one or more processors, automatically populates a tax form associated with the jurisdiction with at least a representation of the estimated tax payment. Appeal Br. 19–20. Appeal 2020-004752 Application 14/010,351 4 REJECTION Claims 35 U.S.C. § References/Basis 1, 4–7, 9–12, 14– 22, 26, 27 101 Eligibility DISCUSSION We have reviewed the Examiner’s rejection of claims 1, 4–7, 9–12, 14–22, 26, and 27 under § 101 and Appellant’s arguments, and Appellant has not persuaded us that the Examiner erred. As consistent with the discussion below, we adopt the Examiner’s reasoning, findings, and conclusions on pages 2–4 of the Final Office Action mailed August 21, 2019 (Final Act.) and pages 3–4 of the Examiner’s Answer mailed April 6, 2020 (Ans.). Section 101 of the Patent Act provides that “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the Supreme Court has long recognized an implicit exception to this section: “Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of these excluded categories, the Court has set out a two-part framework. That framework requires us first to consider whether the claim is “directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of [the] claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo Appeal 2020-004752 Application 14/010,351 5 Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine the claim for an “inventive concept,” “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.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–73). The United States Patent and Trademark Office has issued guidance about this framework. Under Office guidance, to determine whether a claim is directed to an abstract idea, we evaluate (1) whether the claim recites either subject matter that falls into one of three identified categories of abstract ideas or a “tentative abstract idea,” and if so, (2) whether the additional elements of the claim integrate the abstract idea into a practical application. Manual of Patent Examining Procedure § 2106.04 (9th ed. latest rev. June 2020) (MPEP). If the claim is directed to an abstract idea, as noted above, we then consider whether the claim has an inventive concept. MPEP § 2106.05. When doing so, Office guidance explains that we should evaluate “whether any additional element or combination of elements are other than what is well-understood, routine, conventional activity in the field, or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality.” MPEP § 2106.05(II). With this framework in mind, we turn to the Examiner’s rejection of claims 1, 4–7, 9–12, 14–22, 26, and 27 under § 101. Appellant argues independent claims 1, 16, and 19 as a group. See Appeal Br. 13. As permitted by 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal for claims 1, 16, and 19 based on claim 19. We separately address Appellant’s arguments for dependent claims 4–7, 9–12, 14, 15, 17, 18, 20–22, 26, and 27. Appeal 2020-004752 Application 14/010,351 6 Claim 19 Office guidance identifies three categories of abstract ideas: certain methods of organizing human activity, mental processes, and mathematical concepts. MPEP § 2106.04(a). The Examiner determined that claim 19 recites the “abstract idea of calculating estimated tax payments,” which falls into the category of “certain method[s] of organizing human activity[] [because] it recites a fundamental economic principle or legal interactions, namely calculating tax payments.” Final Act. 3 (emphasis omitted).2 The Examiner determined that the additional elements recited in claim 19 include “generic computer components” such as the recited processor, display, and print engine. See Final Act. 3. The Examiner determined that these elements do not integrate the abstract idea into a practical application because the elements “amount to no more than mere instructions to apply the [abstract idea] using generic computer components” and “do not impose any meaningful limits on practicing the abstract idea.” Final Act. 3 (emphases omitted). Finally, the Examiner determined that claim 19 does not “amount to significantly more than the” abstract idea because the additional elements “amount to no more than mere instructions to apply the abstract idea using generic computer components” and “merely applying the exception using generic computer components cannot provide an inventive concept.” Final Act. 3–4 (emphases and quotation marks omitted). 2 The Examiner referred to claim 1 in the Final Office Action, but we understand the Examiner to have meant claim 19 because the Examiner addressed elements that appear only in claim 19 (for example, a display and print engine). See Final Act. 3–4. Appellant acknowledges that claims 1 and 19 contain “similar recitations” and relies on the same arguments for both claims. Appeal Br. 13. Appeal 2020-004752 Application 14/010,351 7 Appellant claims that it is “unable to respond” to the Examiner’s rejection because it lacks the requisite “explicit explanation and analysis” and “it is unclear which specific limitations of the claim[] the Examiner believes recite the alleged abstract idea.” Appeal Br. 8, 9; see also Reply Brief 3–4, filed June 5, 2020 (Reply Br.) (making similar arguments). According to Appellant, there are several parts of the claim “that are clearly not part of an alleged method of organizing human activity.” Appeal Br. 9. Appellant has not persuaded us that the Examiner erred. Under Office guidance, when rejecting a claim for lack of subject matter eligibility, examiners “should identify the judicial exception by referring to what is recited . . . in the claim and explain why it is considered an exception.” MPEP § 2106.07(a) (emphases omitted). Examiners should then “identify any additional elements . . . recited in the claim beyond the identified judicial exception; and evaluate the integration of the judicial exception into a practical application.” MPEP § 2106.07(a) (emphasis omitted). That is what the Examiner did here. The Examiner explained that claim 19 “recites an abstract idea of calculating estimated tax payments” and thus recites “a certain method of organizing human activity” because calculating estimated tax payments is “a fundamental economic principle or legal interaction[].” Final Act. 3 (emphasis omitted). The Examiner then identified the additional elements recited in claim 19 and explained that they “do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.” Final Act. 3 (emphasis omitted). The Examiner thus sufficiently explained and analyzed this part of the rejection. Appeal 2020-004752 Application 14/010,351 8 As for Appellant’s argument that the Examiner failed to identify the limitations of claim 19 that recite an abstract idea, the Examiner implicitly identified these limitations by identifying the additional elements recited in claim 19. This is so because the additional elements by definition include everything but the abstract idea. See, e.g., 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 55 n.24 (Jan. 7, 2019) (explaining that Office guidance “uses the term ‘additional elements’ to refer to claim features, limitations, and/or steps that are recited in the claim beyond the identified judicial exception” (emphasis added)). The parts of the claim other than the identified additional elements thus form the abstract idea. We see no merit in Appellant’s argument that certain elements of claim 19 “are clearly not part of an alleged method of organizing human activity.” The identified elements are part of a process of calculating estimated tax payments. See Appeal Br. 9–10. As determined by the Examiner, calculating an estimated tax payment falls within the category of certain methods of organizing human activity. See, e.g., In re Greenstein, 792 F. App’x 941 (Fed. Cir. 2019) (method of using computers “to manage the sale of taxes received by reason of removal of amounts from tax-deferred vehicles”); Fort Properties, Inc. v. Am. Master Lease LLC, 671 F.3d 1317, 1319 (Fed. Cir. 2012) (method of creating a real estate investment instrument adapted for performing tax-deferred exchanges); see also MPEP § 2106.04(a)(2)(II) (identifying decisions that fall into the category of certain methods of organizing human activity). Appellant next contends that claim 19, when considered as a whole, integrates the abstract idea into a practical application because the claim Appeal 2020-004752 Application 14/010,351 9 “results in a significant reduction of the computational burden for the recalculation.” Appeal Br. 12; see also Reply Br. 4 (making similar arguments). In Appellant’s view, “[a] system implementing the features of” claim 19 “would be a system that is more efficient, more robust, and better than when the features are not implemented.” Appeal Br. 13. Thus, claim 19 reflects “an improvement in the functioning of a computer, or an improvement to other technology or technical field” and the use of the abstract idea “in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.” Appeal Br. 13 (quoting 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 55 (Jan. 7, 2019)). Appellant again fails to persuade us that the Examiner erred. The Examiner determined—and Appellant does not explicitly dispute—that the additional elements recited in claim 19 are “generic computer components” that the claim recites “at a high-level of generality.” Final Act. 3. Claim 19 uses these generic computer components as tools to implement the identified abstract idea. Appeal Br. 19–20. Using generic computer components to implement an abstract idea does not integrate the abstract idea into a practical application. See, e.g., Alice, 573 U.S. at 223–24 (“[W]holly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (second and third alterations in original) (quoting Mayo, 566 U.S. at 77)); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (“Steps that do nothing more than spell out what it means to ‘apply it on a computer’ cannot confer patent-eligibility.”). We thus disagree that claim 19 Appeal 2020-004752 Application 14/010,351 10 reflects a technological improvement or uses the recited abstract idea in some other meaningful way. Appellant does not explicitly challenge the other aspects of the Examiner’s rejection of representative claim 19 under § 101. For at least the above reasons, Appellant has not persuaded us that the Examiner erred in rejecting this claim. We thus sustain this rejection. Claims 4–7, 9–12, 14, 15, 17, 18, 20–22, 26, and 27 Appellant contends that the Examiner failed to separately analyze and explain why dependent claims 4–7, 9–12, 14, 15, 17, 18, 20–22, 26, and 27 are patent ineligible. See Appeal Br. 7–8. Appellant argues that “the Examiner’s consideration of the features [of the claims] in his mind is insufficient to substantiate a proper rejection under 35 U.S.C. § 101.” Reply Br. 2. Appellant has not persuaded us that the Examiner erred. The Examiner determined that dependent claims 4–7, 9–12, 14, 15, 17, 18, 20– 22, 26, and 27 “further define the abstract idea . . . present in [the] independent claims” and therefore also recite “certain methods of organizing human activity.” Final Act. 4. The Examiner also determined that these claims “do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination.” Final Act. 4. We see no reversible error in this analysis. Claims directed to narrow abstract ideas are still directed to abstract ideas. See, e.g., buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“The dependent claims’ narrowing to particular types of such relationships, themselves familiar, Appeal 2020-004752 Application 14/010,351 11 does not change the analysis. This kind of narrowing of such long-familiar commercial transactions does not make the idea non-abstract for section 101 purposes.”). And as determined by the Examiner, nothing in these claims is sufficient to ensure that the claims amount to significantly more than the abstract idea recited in their respective independent claims. See, e.g., BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1291 (Fed. Cir. 2018) (“As a matter of law, narrowing or reformulating an abstract idea does not add ‘significantly more’ to it.” (quoting SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018)). We therefore also sustain the Examiner’s rejection of dependent claims 4–7, 9–12, 14, 15, 17, 18, 20–22, 26, and 27 under § 101. CONCLUSION Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1, 4–7, 9– 12, 14–22, 26, 27 101 Eligibility 1, 4–7, 9– 12, 14–22, 26, 27 No period for taking any 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 Copy with citationCopy as parenthetical citation