Ex Parte Deibler

Patent Trial and Appeal Board

Mar 27, 2017

11692110 (P.T.A.B. Mar. 27, 2017)

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.
11/692,110 03/27/2007 ALINA DEIBLER DEIBLER 7000
47931 7590 03/28/2017
David E Herron II
PO Box 23444
Overland Park, KS 66283
EXAMINER
EBERSMAN, BRUCE I
ART UNIT PAPER NUMBER
3692
MAIL DATE DELIVERY MODE
03/28/2017 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALINA DEIBLER
____________

Appeal 2014-008152
Application 11/692,110
Technology Center 3600
____________

Before BIBHU R. MOHANTY, JAMES A. WORTH, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 46–65 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFRIM-IN-PART.

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Application 11/692,110

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THE INVENTION
The Appellant’s claimed invention is directed to a method of tax
reporting (Spec.1: 20– 21). Claim 46, reproduced below, is representative of
the subject matter on appeal.

46. A method enabling a user to report cash income to a tax
collecting agency, the method comprising the steps of:
providing the user with at least one user computer;
providing a verification computer;
providing the tax collecting agency with at least one computer;
connecting each computer by means of a communication link,
thereby forming a computerized network;
prompting the user to enter an identification number into the at
least one user computer;
receiving, at the verification computer, the identification
number input into the at least one user computer by the user;
verifying the identification number via a computer connection
to the verification computer;
comparing the identification number against a list of known
valid identification numbers;
prompting the user to enter vehicle usage data relating to a
vehicle into the at least one user computer;
recording into the at least one user computer, by the user, cash
income received by the user;
transmitting data input by the user to the at least one computer
of the tax collecting entity;
formulating, within the at least one computer of the tax
collecting agency, an estimated amount of cash income paid to the
user; and
calculating, within the at least one computer of the tax
collecting agency, a difference between the estimated amount of cash
income paid to the user and the cash income received by the user;
notifying, by the at least one computer of the tax collecting
agency, the user of one of
an entitlement to a benefit when the difference is within a
preselected range and
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an assessment of a penalty when the difference exceeds the
preselected range.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Kerkinni US 2002/0107833 A1 Aug. 8, 2002
Dashefsky et al. US 6,098,048 Aug. 1, 2000
van Zeggeren US 5,121,097 June 9, 1992

Allan Liddle, The IRS endorses 401(k) like tip-reporting incentive;
turn over cut sharply in test, Nation’s Restaurant news New York: May 29,
2000. Vol. 34, Iss. 22 (hereinafter KCash).

The following rejections are before us for review:
1. Claims 46–651 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to show possession of the claimed invention.
2. Claims 46–652 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
3. Claims 46, 47, 49–54, and 56–63 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kerkinni and KCash.
4. Claim 48 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kerkinni, Dashefsky, and KCash.

1 The Examiner improperly indicates that claims 45–65 are rejected under
this basis (see Ans. 3), however, we note that claim 45 is cancelled (see
Claim App.).
2 The Examiner improperly indicates that claims 45–65 are rejected under
this basis (see Ans. 3), however, we note that claim 45 is cancelled (see
Claim App.).
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5. Claims 55 and 64 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kerkinni, KCash, and van Zeggeren.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence3.

ANALYSIS
Rejections under 35 U.S.C. § 112, first paragraph
The Examiner has determined that the Specification fails to provide
proper support to show possession of the invention in claim 46 for the
following terms: “cash income”, “difference”, “estimate”, and “range”
(Final Act. 4., Ans. 4–8). The Examiner has also determined that the
Specification fails to provide support in claim 56 for the terms “difference”,
“range”, and “estimate” (Final Act. 4, Ans. 6). The Examiner has also
determined that the Specification fails to provide support in claim 53 for the
term “VIN” (vehicle identification number) (Final Act. 5, Ans. 8– 9). The
Examiner has also determined that the Specification fails to provide support
for the terms “formulating” (claims 46 and 49), “comparing” (claims 60 and
65), “average gross income”, and “credit card receipts” (Final Act. 5, Ans.
9–11). The Examiner has also determined that in claims 46, 56, and 60,
there is no support for the term “vehicle” (Final Act. 5, Ans. 11).

3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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In contrast, the Appellant has argued that these rejections are
improper (App. Br. 13–25).
We agree with the Appellant’s argument in the following regards:
The Specification provides support for the term “cash income” at page 4,
line 11, and Fig. 5. The Specification provides support for the term
“difference” at page 10, lines 5–10 as argued. The Specification provides
support for the term “estimate” at page 10, lines 8–10 as argued. With
regard to claim 46, the Specification provides support for the term
“formulating” also at page 10, lines 8–10 as argued. Support for the claim
terms of the “vehicle” that has been rejected, is found in the Specification at
Figure 3, as argued, which relates to gas and mileage transactions. With
regard to the “comparing” step in claim 60, support is found in Figures 3 and
5 as argued. Further, the Examiner has failed to establish a prima facie case
in the rejection for the terms “average gross income” and “credit card
receipts” as it has not been identified where the terms appear in the claims or
what claims the rejection is specifically directed to. Further, to the extent
that Examiner has rejected claim 56 for lacking support for the term “range”
this rejection is improper as the claim does not include the term “range”.
However, we agree with the Examiner’s rejection in the following
regards:
The Specification fails to provide proper support for an entitlement
benefit when the difference is in a preselected “range,” as recited in claim
46. In the Appeal Brief at page 16 the Appellant has cited to the
Specification at page 10, lines 8–10 as providing support for this feature, but
this does not provide support for an entitlement benefit when the difference
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is within a preselected “range”. Accordingly, this rejection of claim 46 is
sustained.
With regard to the “formulating step” in claim 49, the Appellant has
provided no argument in this regard and this rejection is therefore sustained.
The Specification fails to provide support for the claimed “vehicle
identification number” in claim 53. The Appellant in the Appeal Brief at
page 18 has cited to the Specification at page 11, lines 11–17, as providing
proper support but this citation fails to do so.
The Specification fails to provide support for the “comparing” step in
claim 65. The claim recites a “comparing” step between “the amount of tips
to the reasonable estimated amount of tips transmitted to the one or more tax
collecting entity computers”. Here, the Appellant at page 22 of the Appeal
Brief has cited to the Specification at page 11, lines 3–8 as providing support
for this claimed comparison, but the citation fails to provide the proper
support and this rejection is sustained.
For these above reasons this rejection of claims 46, 49, 53, and 65 are
sustained. Claims 47, 48, 50–52, 54, and 55 depend from claim 46 and the
rejection of these claims are therefore sustained as well. The rejection of
claims 56–64 are not sustained for the reasons given above.

Rejections under 35 U.S.C. § 112, second paragraph
The Examiner has determined in claim 46 that the claim terms “cash
income”, “preselected range”, and “predetermined range” are indefinite
(Final Act. 2–3, Ans. 11).
In contrast, the Appellant argues that the rejection of claim 46 is
improper (App. Br. 26–27).
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Here we determine that the term “cash income” is not indefinite. In
this regard, use of term “cash income” is understood in the context of the
claim and does not render the claim indefinite. We also determine that the
term “preselected range” is not indefinite in the claim. The rejected claim
term “predetermined range” does not appear in the claim. Accordingly, this
rejection is not sustained.

Rejections under 35 U.S.C. § 103(a)
The Appellant argues that the rejection of claim 46 is improper
because the cited prior art fails to disclose “transmitting data input by the
user to at least one computer of the tax collecting entity” as well as the
claimed notification step by the “at least one computer of the tax collecting
entity” (App. Br. 28–33) (emphasis added).
In contrast, the Examiner has determined that this is shown by
Kerkinni at paras. 22 and 23 (Ans. 12).
We agree with the Appellant. The cited claim limitations require
transmitting data to at least one computer of the tax collecting entity as well
as a notification step from this same at least one of the computer of the tax
collecting entity. Here, the citations to Kerkinni at paras. 22 and 23 fail to
disclose this. Further, in KCash the employer operates the proposed
program for tip reporting and the rejection of record fails to provide an
articulated reasoning with rational underpinnings for involving the
computers of the tax collecting entity in the cited combination with the other
elements of the claim. For these reasons the rejection of claim 46 and its
dependent claims are not sustained. The remaining claims contain a similar
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limitation and the rejection of these claims are not sustained for the same
reasons given above.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 46–55 and 65 under 35 U.S.C. § 112, first paragraph.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 56–64 under 35 U.S.C. § 112, first paragraph,
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 46–65 under 35 U.S.C. § 112, second paragraph,
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 46–65 under 35 U.S.C. § 103(a) as listed in the Rejections
section above.

DECISION
The Examiner’s rejection of claims 46–55 and 65 are sustained. The
Examiner’s rejection of claims 56–64 are reversed.

AFFIRMED-IN-PART