Intuit Inc.

Patent Trials and Appeals Board

Feb 24, 2020

14607586 - (D) (P.T.A.B. Feb. 24, 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.
14/607,586 01/28/2015 William T. Laaser INTU1508574 4174
163860 7590 02/24/2020
Paradice and Li LLP/Intuit
1999 S. Bascom Ave.
Suite 300
Campbell, CA 95008
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
02/24/2020 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@paradiceli.com
william@paradiceli.com
yip@paradiceli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIAM T. LAASER
__________________

Appeal 2019-004406
Application 14/607,586
Technology Center 3600
____________________

Before CHARLES N. GREENHUT, JAMES P. CALVE, and
WILLIAM A. CAPP, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 1–44. Br. 9. Claims 45–48 are cancelled.
Id. at 27 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Intuit Inc. as the real party in interest. Br. 2.
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CLAIMED SUBJECT MATTER
Claims 1 and 23 are independent with claim 1 reproduced below.
1. A computing system implemented method for
providing a tax return preparation system, comprising:
generating, with an analytics module of a computing
system, a first matrix having rows corresponding to respective
previously prepared tax returns and columns corresponding to
respective tax return features;
generating, with the analytics module, a second matrix by
factoring the first matrix according to an alternating least
squares algorithm, the second matrix having rows
corresponding to respective profiles and columns corresponding
to respective tax return topics;
receiving, with a user interface hosted by the computing
system, user data associated with a specific user;
matching the user to one or more of the profiles by
applying the user data to the analytics module, the analytics
module arranging the user data into a vector and multiplying
the vector by the second matrix to determine a profile; and
customizing to benefit the specific user, using the
analytics module, a user experience associated with a tax return
preparation interview process based on the one or more profiles
to which the user is matched, the customized user experience
including one or more individualized user interfaces customized
for the user which include customizing one or more of types of
icons displayed to the user, the type of interface format
presented to the user, and images displayed to the user.

Br. 16 (Claims App.).

REJECTION
Claims 1–44 are rejected as directed to patent-ineligible subject matter
under a judicial exception to 35 U.S.C. § 101.

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ANALYSIS
Section 101 of the Patent Act defines patent-eligible-subject matter as:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.

35 U.S.C. § 101 (2012). However, “[l]aws of nature, natural phenomena,
and abstract ideas are not patentable.” Alice Corp. Pty. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014) (citation omitted).
To distinguish patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent-eligible applications, we first
determine whether the claims are directed to a patent-ineligible concept. Id.
at 217. If they are, we consider the elements of each claim, individually and
as an ordered combination, to determine if additional elements transform the
claim into a patent-eligible application, e.g., by providing an “inventive
concept” that ensures the patent amounts to significantly more than a patent
on the ineligible concept. Id. at 217–218.
The USPTO has issued guidance about this framework. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”). Under the Revised Guidance, to determine whether a
claim is “directed to” an abstract idea, we evaluate whether the claim recites
(1) any judicial exceptions, including certain groupings of abstract ideas
listed in the Revised Guidance (i.e., mathematical concepts, certain methods
of organizing human activities such as a fundamental economic practice, or
mental processes); and (2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
See Revised Guidance, 84 Fed. Reg. at 51.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then consider
whether the claim (3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)) or (4) simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. Id. at 56.
Revised Step 2A, Prong One: Are Judicial Exceptions Recited?
Appellant argues the claims as a group. Br. 10–15. We select claim 1
as representative. We consider whether claim 1 recites a judicial exception.
The Examiner determines that claim 1 recites a fundamental economic
practice of tax preparation and abstract ideas of organizing information via
mathematical correlations, organizing human activity via steps of collecting
and analyzing information and displaying certain results, and mental activity
performed mentally by a human merely thinking. See Final Act. 4–5.
In response, Appellant asserts that the “claims are instead directed to
improving the technical field of user experience through customization of
user interfaces through incorporation of particular user experience
elements, based on user data specific of the user.” Appeal Br. 10.
the claims include requirements to form two specific matrices
through very detailed process operations, and then using an
analytics module together with a vector formed from user data
and multiplying the vector by the second matrix to form a
profile, and then using the profile to customize a user
experience for the user, including customizing one or more of
types of icons displayed to the user, the type of interface format
presented to the user, and images displayed to the user.

Id.
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The steps of generating a first and a second matrix recite methods of
organizing human activity in a fundamental economic practice of preparing
income tax returns. This activity involves legal interactions in the form of
legal obligations. See Revised Guidance, 84 Fed. Reg. at 52; see also Fort
Properties Inc. v. Am. Master Lease LLC, 671 F.3d 1317, 1322 (Fed. Cir.
2012) (aggregating real property into portfolio and dividing interests into
shares to buy and sell in a tax-deferred exchange was an abstract idea).
The first matrix has “rows corresponding to respective previously
prepared tax returns and columns corresponding to respective tax return
features.” Appeal Br. 16 (Claims App.). The second matrix has “rows
corresponding to respective profiles and columns corresponding to
respective tax return topics.” Id. These matrices organize information for
the human activity of filing tax returns. See Final Act. 4–5; Spec. ¶ 6. The
claimed “tax return features” of the first matrix can include information such
as income, marital status, tax forms, home ownership, age, location, number
of children, and other information received in the user data. Spec. ¶¶ 9, 46.
The step of the analytics module “generating . . . a second matrix by
factoring the first matrix according to an alternating least squares algorithm”
recites a mathematical concept as mathematical formulas and calculations.
See Revised Guidance, 84 Fed. Reg. at 52; Spec. ¶¶ 10, 46. The first matrix
is factored to produce two reduced matrices, and “[t]here are many possible
implementations of the alternating least squares algorithm.” Spec. ¶ 61.
The step of “matching the user to one or more of the profiles by . . .
arranging the user data into a vector and multiplying the vector by the
second matrix to determine a profile” also recites mathematical formulas and
calculations which are abstract ideas. Revised Guidance, 84 Fed. Reg. at 52.
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Analytics module 113 compares user data to a second matrix to match
the user to a common profile(s) to determine individualized tax interview
content. Spec. ¶¶ 46, 58, 63. Such processes to organize and combine data
sets into a new data set or a profile, without more, recite an abstract process.
See Digitech Image Tech., LLC v. Elec. for Imaging, Inc., 758 F.3d 1344,
1351 (Fed. Cir. 2014) (“Without additional limitations, a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible.”); see also Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir.
2017) (although data structures add particularity, the concept of organizing,
displaying, and manipulating data of certain documents is an abstract idea).
The final step of “customizing to benefit the specific user, using the
analytics module, a user experience associated with a tax return preparation
interview process based on the one or more profiles to which the user is
matched, the customized user experience including . . . individualized user
interfaces customized for the user” recites customized “icons,” “interface
formats,” and “images” displayed to the user. This step recites an abstract
idea of organizing human activity for tax preparation customized to a user.
Revised Guidance, 84 Fed. Reg. at 52; Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1369–70 (Fed. Cir. 2015) (just presenting
tailored content to a user based on information about a user or a profile is an
abstract idea); Affinity Labs of Texas, LLC v. Amazon.com, Inc., 838 F.3d
1266, 1271 (Fed. Cir. 2016) (tailoring content based on user information and
the general idea of a “customized user interface,” is an abstract idea).
Therefore, we determine that claim 1 recites abstract ideas of certain
methods of organizing human activity and mathematical concepts.
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Alice Step 1, Revised Step 2A, Prong Two: Is There an Integration?
We next consider whether claim 1 recites any additional elements that
integrate the abstract ideas into a practical application. Revised Guidance,
84 Fed. Reg. at 54 (Revised Step 2A, Prong Two). Appellant argues that
“the claims are directed to an improved user interface generation process
that customizes user interfaces to a specific user thereby improving the
technical field of user experience.” Appeal Br. 10. Appellant also argues
As in Core Wireless Licensing v. LG Electronics, (2016-
2684, 2017-1922, Fed. Cir 2018), Appellant submits that these
limitations disclose a specific manner of generating and
displaying a limited set of information to the user, rather than
using conventional user interface methods to display generic,
noncustomized data to a user. Like the improved systems
claimed in Enfish, Thales, Visual Memory, and Finjan, these
claims recite a specific improvement over prior systems,
resulting in an improved customized user-specific user
interface.

Id. These arguments are not persuasive for the following reasons.
First, “[t]o salvage an otherwise patent-ineligible process, a computer
must be integral to the claimed invention, facilitating the process in a way
that a person making calculations or computations could not.” Bancorp
Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278
(Fed. Cir. 2012). Here, “individualized user interfaces customized for the
user” do not represent an advance in user interfaces. Claim 1 recites generic
interface features––icons, formats, and images displayed to the user. Merely
reciting a display of content does not cross out of the abstract idea category.
See Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263
(Fed. Cir. 2016); Trading Techs. Int’l Inc. v. IBG LLC, 921 F.3d 1378, 1384
(Fed. Cir. 2019) (customized information display for traders is abstract).
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Second, the decision in Core Wireless illustrates the distinction. The
claims in Core Wireless were directed to an improved interface for a mobile
device that displayed a summary of applications in unlaunched states so that
users could navigate quickly to desired applications to find data of interest in
three steps from startup as compared to known devices that required users to
scroll around and switch views many times to find desired data/functionality.
Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356,
1362–63 (Fed. Cir. 2018). This user interface improved the efficiency of
electronic devices with small screens by providing “a limited list of common
functions and commonly accessed stored data” accessible directly from the
main menu rather than requiring users to “drill down through many layers to
get to the desired data or functionality.” Id. at 1363.
Here, claim 1 recites “individualized user interfaces customized” with
icons, interfaces, and images without reciting any technical improvement to
interfaces or computers. These components display information that results
from the abstract organizing and mathematical calculation steps recited in
claim 1. Merely displaying information via generic interface components
does not integrate claim 1 into a practical application. See Electric Power
Group, LLC, v. Alstom, 830 F.3d 1350, 1353 (Fed. Cir. 2016) (collecting
information, analyzing it, and displaying certain results of the collection and
analysis found to be an abstract idea); Content Extraction and Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1348 (Fed. Cir. 2014)
(collecting data, storing data in memory, and recognizing certain data in the
stored data is an abstract idea); Cyberfone Systems, LLC v. CNN Interactive
Group, Inc., 558 F. App’x 988, 992 (Fed. Cir. 2014) (collecting, separating,
and transmitting information in categories is not patent-eligible).
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The Specification describes these components generically as well.
The pictures 120 and the themes 121 include variations
for the graphical user interface user experience elements that
can be used by the tax return preparation engine 112 to provide
an individualized interview experience, and/or interface, to a
user, according one embodiment. The pictures 120 include
images of varying topics/themes, shapes, sizes, and colors that
can be positioned proximate to questions or question topics to
assist the user in understanding the gist of the series of
questions being presented, according to one embodiment. For
example, the pictures 120 can include a house, a doctor or
stethoscope, children, a school, a car, and the like, according to
one embodiment. The themes 121 include background colors,
font colors, font sizes, animations, avatars, other theme-related
graphics that can be applied to text or graphics within the user
interface 115 while communicating with the user, and/or any
other form of theme, as discussed herein, and/or as known in
the art at the time of filing, and/or as developed after the time of
filing, according to various embodiments.

The individualized interview content can include, but is not
limited to, one or more of: a sequence with which interview
questions are presented, the content/topics of the interview
questions that are presented, the font sizes used while
presenting information to the user, the length of descriptions
provided to the user, themes presented during the interview
process, the types of icons displayed to the user, the type of
interface format presented to the user, images displayed to the
user, assistance resources listed and/or recommended to the
user, backgrounds presented, avatars presented to the user,
highlighting mechanisms used and highlighted features, and
any other features that individually, or in combination, create a
user experience, as discussed herein, and/or as known in the art
at the time of filing, and/or as developed after the time of filing.

Spec. ¶¶ 78, 102. The interface presents information in different forms,
which is not patent eligible. See Trading Techs., 921 F.3d at 1384.
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Such generic features recited at such a high level of generality do not
integrate the abstract ideas in claim 1 into a practical application. They do
not transform or reduce a particular article to a different state or thing. Nor
do they recite a particular machine that is integral to the claim. Instead, they
add insignificant extra-solution activity to the abstract ideas of organizing
information and performing mathematical calculations on the information.
See Revised Guidance, 84 Fed. Reg. at 55. Computers are used as tools to
perform abstract ideas versus integrate the ideas into a practical application.
See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 223 (2014) (“Mayo made
clear that transformation into a patent eligible application requires ‘more
than simply stat[ing] the [abstract idea] while adding the words “apply it.”’”)
(citation omitted); Data Engine Techs. LLC v. Google LLC, 906 F.3d 999,
1011 (Fed. Cir. 2018) (“The eligibility question is not whether anyone has
ever used tabs to organize information. That question is reserved for §§ 102
and 103. The question of abstraction is whether the claim is ‘directed to’ the
abstract idea itself.” (citing Alice, 573 U.S. at 218 n.3)).
“No matter how much of an advance in [a particular] field the claims
recite, the advance lies entirely in the realm of abstract ideas, with no
plausibly alleged innovation in the non-abstract application realm.” SAP
America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
If “user experience” means the subjective feelings of a user (Appeal
Br. 11 (“The first requirement for an exemplary user experience is to
meet the exact needs of the customer”)), it does not integrate the abstract
ideas into a practical application. Intellectual Ventures I LLC v. T-Mobile
USA, Inc., 902 F.3d 1372, 1381 (Fed. Cir. 2018) (defining quality of service
as a purely subjective “end-user experience” renders the function indefinite).
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Appellant further argues that “Appellant’s solution is a dynamic
customization of the user experience that varies with each user,” and “user
experience includes tailoring the operation, functions, and user interfaces to
ensure that the user has an enjoyable experience.” Appeal Br. 13. Appellant
argues that “the claims are technical, focused and specifically directed
towards improving the user experience of a specific user using the system.”
Id. at 14. However, “individualized user interfaces customized for the user”
only present particular content rather than improved technology as discussed
above and thus do not integrate the abstract ideas into a practical application.
The first and second matrices are recited as generic data structures.
The second matrix is generated by factoring the first matrix by an alternating
least squares algorithm, which can use a number of algorithms or analysis
techniques. Spec. ¶ 76. There is no indication that these data structures are
technical innovations. Even if they add some particularity to the abstract
ideas recited in claim 1, they do not make the abstract ideas patent-eligible.
See Intellectual Ventures v. Capital One Fin., 850 F.3d at 1341. Thus, the
first and second matrices do not integrate claim 1 into a practical application.
BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018)
(“[T]he recitation of a database structure slightly more detailed than a
generic database does not save the asserted claims.”). Nor do matrix rows
and columns improve technology. Id. at 1288 (“In Enfish, we determined
that claims related to a database structure were not abstract because their
focus include a new ‘self-referential table [that] functions differently than
conventional database structures’ [and] distinguished this . . . improvement
in computer functionality from the performance of ‘economic or other tasks
for which a computer is used in its ordinary capacity.’”) (citations omitted).
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Essentially, Appellant argues that claim 1 recites a combination of
abstract ideas and this combination represents a technological advance.
Unfortunately, the law holds otherwise. Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“a claim for a new abstract
idea is still an abstract idea.”); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793
F.3d 1306, 1335 (Fed. Cir. 2015) (claims that improved an abstract idea, but
not a computer’s performance, were held unpatentable); RecogniCorp, LLC
v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one
abstract idea (math) to another abstract idea (encoding and decoding) does
not render the claim non-abstract.”).
Automating manual activities or mental steps is not an integration into
a practical application. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) (“[R]elying on a computer to perform routine
tasks more quickly or more accurately is insufficient to render a claim patent
eligible.”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (US.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations
could be performed more efficiently via a computer does not materially alter
the patent eligibility of the claimed subject matter.”); In re Salwan, 681 F.
App’x 938, 941 (Fed. Cir. 2017) (non-precedential) (claims to organizing
patient health information recited little more than automation of a method of
organizing human activity with respect to medical information).
Even if we assume that the techniques claimed are “[g]roundbreaking,
innovative, or even brilliant,” that is not enough for eligibility. Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013);
accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014).

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For the foregoing reasons, we determine that claim 1 does not
integrate the abstract ideas of claim 1 into a practical application.
Alice Step 2, Revised Step 2B –– Inventive Concept
We next consider whether claim 1 recites any elements, individually,
or as an ordered combination, that provide an inventive concept. Alice, 573
U.S. at 217–18. “The second step of the Alice test is satisfied when the
claim limitations involve more than performance of well-understood, routine
[and] conventional activities previously known to the industry.” Berkheimer
v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (internal quotations and
citation omitted); see also Revised Guidance, 84 Fed. Reg. at 56 (explaining
that the second step of the Alice analysis considers whether a claim adds a
specific limitation beyond a judicial exception that is not “well-understood,
routine, conventional” activity in the field).
We agree with the Examiner that claim 1 does not recite additional
elements, considered individually or as an ordered combination, that amount
to significantly more than the abstract idea. Individually, the limitations
recite the abstract ideas discussed above. The computer, matrix structures,
and interface are claimed generically to perform generic functions of storing,
retrieving, processing, and displaying information, which the Examiner finds
are well-understood, routine, and conventional activities. Final Act. 5–6; see
also Elec. Power Grp., 830 F.3d at 1355. As an ordered combination, these
features add nothing not already present when the features are considered
individually as above, and they do not improve the functioning of computers
or other technology. Final Act. 6; see Revised Guidance, 84 Fed. Reg. at 56
n.36; MPEP 2106.05(d).
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The alleged improvement to the subjective user experience (Appeal
Br. 14) merely involves the combination of abstract ideas recited in claim 1
and also describes the format of information presented, as discussed above.
USPTO Memorandum of April 19, 2018, ‘‘Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)” (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/ files/documents/memo-berkheimer-
20180419.PDF (Berkheimer memo) indicates that the Specification may
describe additional elements in a manner that indicates the elements are
sufficiently well-known that the specification need not describe their
particulars to satisfy 35 U.S.C. § 112(a). Berkheimer memo at 3–4. This is
such a case as discussed above. Spec. ¶¶ 21, 45, 46, 58–76, Tables 1–3.
We, therefore, determine that claim 1 does not recite any elements,
individually, or as an ordered combination, that provide an inventive concept
sufficient to transform the abstract idea into patent eligible subject matter.
Accordingly, we sustain the rejection of claim 1 and claims 2–44,
which are not argued separately and therefore fall with claim 1.
CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–44 101 Patent Eligibility 1–44
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED