Ex Parte Throndson et al

Board of Patent Appeals and Interferences

Sep 10, 2012

10811709 (B.P.A.I. Sep. 10, 2012)

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.
10/811,709 03/29/2004 Timothy J. Throndson 9411-3 1356
20792 7590 09/10/2012
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
GLASS, RUSSELL S
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
09/10/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte TIMOTHY J. THRONDSON and THOMAS FIELD
____________________

Appeal 2011-003135
Application 10/811,709
Technology Center 3600
____________________

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

KIM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003135
Application 10/811,709

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
44 and 46-691. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The claims are directed to methods, systems, and computer program
products for processing and/or preparing a tax return and initiating certain
financial transactions (Title). Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method of processing a tax return, comprising:
receiving tax information associated with a taxpayer,
wherein the tax information is in a plurality of media formats;
converting the tax information into a common electronic
format;
determining if the tax information is sufficient to
generate a tax return therefrom; and
processing the tax information to generate a tax return if
the tax information has been determined to be sufficient.

Claims 1-6, 8, 12-14, 18-20, 22, 26-29, 32-34, 38-45, 49-60, 62-63,
and 67 stand rejected under 35 U.S.C. § 102(e) as anticipated by Regan (US
7,234,103 B1, iss. Jun. 19, 2007); claims 10, 11, 24, 25, 36, 37, and 47 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Regan in view of
Hermreck (US 2002/0133410 A1, pub. Sep. 19, 2002); claims 15, 30, 31, 64,
and 65 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Regan
in view of Valentine (US 2002/0013747 A1, pub. Jan. 31, 2002); claims 16,
17, 46, and 66 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Regan in view of Wilson (US 7,177,829 B1, iss. Feb. 13, 2007); claims 7

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed April 1, 2010) and Reply Brief (“Reply Br.,” filed September 7,
2010) and the Examiner’s Answer (“Exam’r’s Ans.,” mailed July 7, 2010).
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Application 10/811,709

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and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Regan
in view of Longfield (US 5,963, 921, iss. Oct. 5, 1999); claims 9, 23, and 25
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Regan in view
of Wagner (US 2003/0233296 A1, pub. Dec. 18, 2003); claim 61 stands
rejected under 35 U.S.C. § 103(a) as unpatentable over Regan in view of
Sobotta (US 2003/0036912 A1, pub. Feb. 20, 2003); and claims 68 and 69
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Regan in view
of Baker (US 6,473,741 B1, iss. Oct. 29, 2002).

ISSUES
Did the Examiner err in asserting that Regan anticipates “receiving tax
information associated with a taxpayer, wherein the tax information is in a
plurality of media formats,” as recited in independent claim 12?
Did the Examiner err in asserting that Regan anticipates “presenting
the taxpayer with options for receiving value if the taxpayer is entitled to a
tax refund,” as recited in independent claim 143?
Did the Examiner err in asserting that Regan anticipates “establishing
an account with a financial institution if the taxpayer is entitled to a refund,”
as recited in independent claim 284?
Did the Examiner err in asserting that Regan anticipates “scanning at
least one financial document,” as recited in independent claim 63?

2 We choose independent claim 1 as representative of independent claims 1,
51, and 55. See 37 C.F.R. § 41.37(c)(1)(vii).
3 We choose independent claim 14 as representative of independent claims
14, 40, 52, 54, 56, 58, 59, 62, and 68. See 37 C.F.R. § 41.37(c)(1)(vii).
4 We choose independent claim 28 as representative of independent claims
28, 53, and 57. See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2011-003135
Application 10/811,709

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FINDINGS OF FACT
Specification
FF1. The Specification does not set forth a definition of media
formats.

Regan
FF2. The system in Regan can support multiple documents and
document types (col. 5, l. 4), and can take documents in both PDF and
HTML formats (Fig. 29).

ANALYSIS
Independent Claim 1
We are not persuaded the Examiner erred in asserting that Regan
anticipates “receiving tax information associated with a taxpayer, wherein
the tax information is in a plurality of media formats,” as recited in
independent claim 1 (App. Br. 10; Reply Br. 2). Appellants assert that
“[t]his recitation from Regan does not state that the tax information is in
multiple media formats just that multiple document types are supported...
[t]he PDF and HTML formats [in Fig. 29 of Regan] are both electronic file
formats and, therefore, are not multiple media formats” (App. Br. 10).
However, the Specification does not set forth a definition of media formats
that would exclude multiple types of electronic file formats (FF1).
Accordingly, under a broadest reasonable construction, Regan’s disclosure
of a system that can take documents in both PDF and HTML formats (FF2)
properly corresponds to “a plurality of media formats,” as recited in
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independent claim 1. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004) (“[d]uring examination [of a patent application, a
pending claim is] given [the] broadest reasonable [construction] consistent
with the specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art”)
(internal citation and quotations omitted).

Independent Claim 14
We are not persuaded the Examiner erred in asserting that Regan
anticipates “presenting the taxpayer with options for receiving value if the
taxpayer is entitled to a tax refund,” as recited in independent claim 14 (App.
Br. 11; Reply Br. 2-3). Independent claim 14 is a method claim. By
presenting the aforementioned aspect in the conditional “if” format, under a
broadest reasonable interpretation of that claim aspect, if the condition is not
met, the balance of the claim aspect also does not need to be met. To that
end, Figure 34 of Regan discloses a scenario where a taxpayer owes a tax,
and the taxpayer is presented with options for paying the tax, thus meeting
the last aspect of independent claim 14. In such a scenario, because the
taxpayer is not entitled to a refund, that particular “if” condition is not
satisfied, and thus the taxpayer need not be presented with options for
receiving value. Accordingly, Regan satisfies all of the claim aspects.

Independent Claim 28
We are not persuaded the Examiner erred in asserting that Regan
anticipates “establishing an account with a financial institution if the
taxpayer is entitled to a refund,” as recited in independent claim 28 (App.
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Br. 11-12; Reply Br. 2-3). Independent claim 28 is also a method claim. By
presenting the aforementioned aspect in the conditional “if” format, under a
broadest reasonable interpretation of that claim aspect, if the condition is not
met, the balance of the claim aspect also does not need to be met. Figure 34
of Regan discloses a scenario where a taxpayer owes a tax. In such a
scenario, because the taxpayer is not entitled to a refund, that particular “if”
condition is not satisfied, and thus an account need not be established.
Accordingly, Regan satisfies all of the claim aspects.

Independent Claim 63
We are persuaded the Examiner erred in asserting that Regan
anticipates “scanning at least one financial document,” as recited in
independent claim 63 (App. Br. 12-13; Reply Br. 2-3). The Examiner
asserts that formatting a retrieved electronic form, as set forth in Figure 1 of
Regan, corresponds to the recited scanning (Exam’r’s Ans. 16). However,
the balance of independent claim 63 recites “converting information on the
at least one financial document into an electronic format,” which provides
context to the recited scanning step. See Phillips v. AWH Corp., 415 F.3d
1303, 1314 (Fed. Cir. 2005) (internal citations omitted) (“[q]uite apart from
the written description and the prosecution history, the claims themselves
provide substantial guidance as to the meaning of particular claim terms. To
begin with, the context in which a term is used in the asserted claim can be
highly instructive”); ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088
(Fed. Cir. 2003) (“the context of the surrounding words of the claim also
must be considered in determining the ordinary and customary meaning of
those terms”). If formatting the retrieved electronic form, as set forth in
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Application 10/811,709

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Regan, corresponds to the recited scanning step, then the recited converting
step is impermissibly rendered superfluous, as the document would already
be in electronic form prior to the recited converting. See Texas Instr. Inc. v.
United States Int'l Trade Comm'n, 988 F.2d 1165, 1171 (Fed. Cir. 1993)
(claim language cannot be mere surplusage. An express limitation cannot be
read out of the claim); Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1563
(Fed. Cir. 1991) (two distinct claim elements should each be given full
effect).

Dependent Claims
Appellants’ sole argument concerning all dependent claims is that
they each respectively depend from an allowable independent claim (App.
Br. 13-15). However, as we sustain the rejections of all independent claims,
except independent claim 63, we sustain the rejections of all dependent
claims, except dependent claims 64-67.

DECISION
The Examiner’s rejection of claims 1-44, 46-62, 68, and 69 is
AFFIRMED.
The Examiner’s rejection of claims 63-67 is REVERSED.
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-IN-PART

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