Thomson Reuters Global Resources

Patent Trials and Appeals Board

Feb 3, 2021

2020004752 (P.T.A.B. Feb. 3, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
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
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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

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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
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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
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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.
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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.
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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
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“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
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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,
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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