Timothy J. Throndson et al.

Patent Trials and Appeals Board

Apr 2, 2020

13769717 - (D) (P.T.A.B. Apr. 2, 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.
13/769,717 02/18/2013 Timothy J. Throndson 9411-3CT 1063
20792 7590 04/02/2020
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
GLASS, RUSSELL S
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
uspto@myersbigel.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TIMOTHY J. THRONDSON and THOMAS FIELD
____________

Appeal 2018-005834
Application 13/769,717
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–14 and 40–57. We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Tax-N-Case,
L.L.C. Appeal Br. 1.
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THE INVENTION
Appellant claims a method, systems, and a computer program product
for processing and/or preparing a tax return and initiating certain financial
transactions. (Spec. ¶ 2, Title).
Claim 1 is representative of the subject matter on appeal.
1. A method of processing a tax return, comprising:
performing operations as follows on at least one processor:
receiving tax information associated with a taxpayer;
determining if the tax information is sufficient to
generate a tax return therefrom;
processing the tax information to generate a tax return
responsive to the tax information having been determined to be
sufficient to generate the tax return;
presenting the taxpayer with options for receiving value
responsive to the taxpayer being entitled to a tax refund based,
on the generated tax return; and
presenting the taxpayer with options for paying a tax
responsive to the taxpayer owing a tax based on the generated
tax return;
wherein receiving the tax information associated with the
taxpayer comprises:
electronically scanning at least one financial document
associated with the taxpayer, the at least one financial document
containing at least a portion of the tax information.

THE REJECTION
1. Claims 1–14 and 40–57 stand rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
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2. Claims 1–14 and 42–55 are rejected under 35 U.S.C. § 112(a)
or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.
3. Claims 1–14 and 42–55 are rejected under 35 U.S.C. §112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph as being indefinite.

ANALYSIS
35 U.S.C. § 101 REJECTION
We sustain the rejection of claims 1–14 and 40–57 under 35 U.S.C. §
101.
The Supreme Court
set forth a framework for distinguishing patents
that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, . . .
determine whether the claims at issue are directed
to one of those patent-ineligible concepts. . . . If
so, . . . then ask, “[w]hat else is there in the claims
before us?” . . . To answer that question, . . .
consider the elements of each 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. . . . [The Court] described
step two of this analysis as 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.”
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Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73
(2012)) (citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 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.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 50–57 (Jan. 7, 2019).
The Examiner determines that the claims are directed to preparing a
tax return (Final Act. 2). The Examiner further determines that preparing a
tax return is collecting and comparing known information. The Examiner
finds the additional elements or combination of elements other than the
abstract idea i.e. processor, memory, scanner, etc. amount to no more than
mere instructions to implement the idea on a generic computer. The
Examiner further finds that the additional elements do not provide
meaningful limitations to transform the abstract idea into a patent eligible
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application of the abstract idea such that the claims amount to significantly
more than the abstract idea itself. (Final Act. 3).
The Specification discloses that the “present invention relates to tax
return preparation and filing.” (Spec. 2). “Embodiments of the present
invention may allow taxpayers with little or no knowledge of tax law to
prepare and/or file a tax return on a self-serve basis.” (Spec. 3).
Consistent with this disclosure, claim 1 recites “receiving tax
information,” “processing the tax information to generate a tax return,”
“presenting the taxpayer an option for receiving value responsive to the
taxpayer being entitled to a tax refund” and “presenting the taxpayer with
options for paying a tax.” Therefore, claim 1 recites a method of preparing a
tax return.
We, thus, agree with the Examiner’s findings that the claims recites a
method of preparing a tax return, and that the recited method steps use
evaluation and judgment to prepare a tax return, and is therefore a mental
process that can be performed, as has been done for years, in the human
mind with or without a pen and paper. Mental process are considered an
abstract idea, and, thus, a judicial exception. Guidance 84 Fed. Reg. at 52.
Turning to the second prong of the “directed to test”, claim 1 requires
a “processor.” The recitation of the word “processor” does not impose “a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. Guidance 84
Fed. Reg. at 52. We find no indication in the Specification, nor does
Appellant direct us to any indication, that the operations recited in
independent claim 1 invoke any inventive programming, require any
specialized computer hardware or other inventive computer components,
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i.e., a particular machine, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance. Guidance, 84 Fed. Reg. at
55.
In this regard, the recitation does not affect an improvement in the
functioning of the recited processor or other technology, does not recite a
particular machine or manufacture that is integral to the claims, and does not
transform or reduce a particular article to a different state or thing. Id.
Thus, claim 1 is a judicial exception that is not integrated into a practical
application, and thus is directed to that judicial exception, here, an “abstract
idea.”
Turning to the second step of the Alice analysis, because we find that
the claims are directed to a judicial exception, claim 1 must include an
“inventive concept” in order to be patent-eligible, i.e., there must be an
element or combination of elements that is sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
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Alice, 573 U.S. at 217-–18 (alteration in original) (quoting Mayo, 566 U.S.
at 72–73.
The introduction of a processor into the claims does not alter the
analysis at Alice step two.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea
“while adding the words ‘apply it’” is not enough
for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological
environment.’” Stating an abstract idea while
adding the words “apply it with a computer”
simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a
computer amounts to a mere instruction to
“implemen[t]” an abstract idea “on . . . a
computer,” that addition cannot impart patent
eligibility. This conclusion accords with the
preemption concern that undergirds our § 101
jurisprudence. Given the ubiquity of computers,
wholly 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.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the relevant question is whether claim 1 here does more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. It does not.
Taking the claim elements separately, the function performed by the
processor at each step of the process is purely conventional. Using a
processor to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
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the most basic functions of a processor. All of these computer functions are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
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The claims do not, for example, purport to improve the functioning of
the computer itself. As we stated above, the claims do not affect an
improvement in any other technology or technical field. The Specification
discloses that the recited processor may be a commercially available
microprocessor. (Spec. 6). Thus, claim 1 amounts to nothing significantly
more than instructions to apply the abstract idea, here, the mental process of
preparing a tax return, using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 4–10; Reply Br. 2–
4) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the electronic scanning of the documents cannot
be done in the human mind using a pen and paper. (Appeal Br. 5). We have
determined that the claims are directed to preparing a tax return, which is a
mental process, and thus an abstract idea. The step of scanning of
documents is considered an element recited in claim 1 that is in addition to
this abstract idea, and therefore the scanning is not part of the abstract idea
itself. As such, the Examiner did not determine that the scanning recited in
claim 1 may be done by a human with pen and paper. Here, the scanning
function has been considered in determining whether the claim includes
significantly more than the abstract idea. We agree with the Examiner’s
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finding that the scanning function is done by a generic scanner in a well-
known and conventional manner, and therefore does not amount to
significantly more than the abstract idea itself. (Ans. 4). In our view, this
limitation is recited at a high-level of generality and comprises routine
techniques and post-solution activity that does not impart a sufficient
inventive concept to claim 1. See Mayo, 132 S.Ct. at 1298 (“well-
understood, routine, conventional activity previously engaged in by
scientists who work in the field ... is normally not sufficient to transform an
unpatentable law of nature into a patent-eligible application of such law.”);
see also Parker v. Flook, 437 U.S. 584, 590 (1978) (“The notion that post-
solution activity, no matter how conventional or obvious in itself, can
transform an unpatentable principle into a patentable process exalts form
over substance.”).
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims solve the problem of assisting
taxpayers with complying with tax laws and regulations, which is a real
world use and therefore the claims are not directed to an abstract concept.
(Appeal Br. 7–8). Appellant relies on McRO, Inc. dba Planet Blue v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) in making this
argument.
We are not persuaded that the claimed invention is analogous to the
claimed invention in McRO. The claims in McRO were directed to a
specific asserted improvement in computer animation, i.e., the automatic use
of rules of a particular type. McRO, 837 F.3d at 1313. By contrast, the
independent claims under appeal recite only receiving and processing tax
data. As we found above, claim 1 does not recite an improvement to any
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technology or technical process.
Appellant argues that the claims meet the requirements of novelty and
non-obviousness, and as a result include unconventional recitations other
than what is well-understood, routing and conventional, and therefore these
recitations qualify as significantly more than any judicial exception. To the
extent Appellant maintains that the limitations of claim 1 must amount to
“significantly more” than an abstract idea because the claimed apparatus is
allegedly patentable over the prior art, Appellant misapprehends the
controlling precedent. Although the second step in the Alice/Mayo
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for “‘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. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90.
We find untimely Appellants’ argument in the Reply Brief directed to
the advantages of scanning and the eligibility of the claims 14 and 55.
(Reply Br. 3). We note that these new arguments were raised by Appellant
for the first time in the Reply Brief, and they are not in response to a new
issue brought up by the Examiner in the Answer. Appellant is reminded
that:
[T]he purpose of a reply brief is to ensure the Appellant the
opportunity to have the last word on an issue raised by the
Examiner. The reply brief enables the Appellant to address any
new grounds of rejection the Examiner may have raised in the
answer, or to address changes or developments in the law that
may have occurred after the principal brief was filed. The reply
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brief is not an opportunity to make arguments that could have
been made during prosecution, but were not. Nor is the reply
brief an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner's
rejections, but were not.
Giving cognizance to belated arguments in a reply would
vitiate the force of the requirement in Board Rule 37(c)(1)(vii)
that “[a]ny arguments or authorities not included in the brief . . .
will be refused consideration by the Board, unless good cause is
shown.” The reference in that section to the “reply brief filed
pursuant to § 41.41” does not create a right for the Appellant to
raise an argument in the reply brief that could have been raised
in the principal brief but was not. Rather, that reference merely
puts Appellants on notice that arguments that could be made in
the reply brief, but are not, are waived.
Ex parte Borden, Appeal No. 2008-004312, at 4–5 (BPAI Jan. 7, 2010)
(informative). We therefore consider Appellant’s arguments raised in the
Reply Brief to be waived.
In view of the foregoing, we will sustain this rejection of claim 1. We
will also sustain the rejection as it is directed to the remaining claims,
because Appellant has not argued the separate eligibility of these claims in
Appellant’s Appeal Brief.

REJECTION UNDER 35 U.S.C. §112, SECOND PARAGRAPH
The Examiner finds that the claim 1 limitation “determining if the tax
information is sufficient to generate a tax return” is vague and indefinite,
because no steps are listed which would tell one of ordinary skill in the art
how the determination is made. (Final Act. 4).
In determining whether a claim is unpatentable under § 112, second
paragraph, we look to whether a person of ordinary skill in the art would
have understood what was claimed, when the claim is read in light of the
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Specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986); In re Moore, 439 F.2d 1232, 1235 (CCPA
1971) (“[T]he definiteness of the language employed must be analyzed--not
in a vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing
the ordinary level of skill in the pertinent art.”).
We will not sustain this rejection because we agree with Appellant,
and find that there are numerous tax preparation software packages available
that analyze whether enough information has been input to determine
whether a tax return can be generated, so that a computer programmer
skilled in the art of developing tax preparation software would known how
to determine if the tax information is sufficient to generate a tax return.
(Appeal Br. 10–11). As such, we find that one skilled in the art would have
understood that certain information is required by various taxing authorities,
and thus would have understood how the step of “determining if the tax
information is sufficient to generate a tax return” is performed.
In view of the foregoing, we will not sustain this rejection.

REJECTION UNDER 35 U.S.C. 112, FIRST PARAGRAPH
The Examiner finds that because there is no algorithm or instructions
described in the Specification to enable one of ordinary skill in the art to
program a computer, to perform the step of “determining if the tax
information is sufficient to generate a tax return,” the Specification does not
include a written description of this subject matter. (Final Act. 4).
Whether a Specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
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assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellant was in
possession of the claimed invention. See id. When examining computer-
implemented functional claims, such as claim 1, the Examiner should
determine whether the specification discloses the computer and the
algorithm (e.g., the necessary steps and/or flowcharts) that perform the
claimed function in sufficient detail such that one of ordinary skill in the art
can reasonably conclude that the inventor possessed the claimed subject
matter at the time of filing. It is not enough that one skilled in the art could
write a program to achieve the claimed function because the specification
must explain how the inventor intends to achieve the claimed function to
satisfy the written description requirement. See, e.g., Vasudevan Software,
Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015).
Appellant argues that a computer programmer skilled in the art of
developing tax preparation software would have been capable of developing
software that performs the functionality of “determining if the tax
information is sufficient to generate a tax return therefrom and/or
“determining if the tax return contains an error.” (Appeal Br. 11).
Although we acknowledge that a skilled artisan skilled in the art of
developing tax preparation software could conceivably develop software to
perform the functionality, it is not enough that a skilled artisan could have
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written a program to achieve the claimed function. The Specification must
explain sufficiently how the inventor intends to achieve the claimed function
to satisfy the written description requirement. See, e.g., Vasudevan, 782
F.3d at 681–683.
We agree with the Examiner that the Specification does not explain, at
all, how the inventor performs the step of “determining if the tax information
is sufficient to generate a tax return.” For example, Appellant does not
identify, and we are unable to ascertain independently, what types of tax
information are sufficient to generate a tax return, let alone how that
determination is made, in the invention Therefore, we will sustain this
rejection.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–14 and
40–57 under 35 U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 1–14 and 40–57
under 35 U.S.C. §112, first paragraph.
We conclude the Examiner did not err in rejecting claims 1-14 and 42-
55.

DECISION
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–14 and
40–57
101 Eligibility 1–14 and
40–57

1–14 and
40–57
112(a) Written
Description
1–14 and
40–57

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Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–14, and
42–55
112(b) Indefiniteness 1–14 and
42-55
Overall
Outcome
1–14 and
40–57

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED