INTUIT INC.

Patent Trials and Appeals Board

Mar 27, 2020

13781571 - (D) (P.T.A.B. Mar. 27, 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.
13/781,571 02/28/2013 Nankun Huang 327696-000019 6096
155998 7590 03/27/2020
DLA PIPER LLP US - Intuit
ATTN: PATENT GROUP
11911 Freedom Dr.
Suite 300
RESTON, VA 20190
EXAMINER
BORLINGHAUS, JASON M
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/27/2020 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):
PatentProsecutionRes@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NANKUN HUANG, AMIR EFTEKHARI, CAROL A. HOWE,
ALAN B. TIFFORD, and JEFFREY P. LUDWIG
____________

Appeal 2019-003519
Application 13/781,571
Technology Center 3600
____________

Before MICHAEL M. BARRY, PHILLIP A. BENNETT,
and IFTIKHAR AHMED, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 61–84, which constitute all of the
pending claims. See Appeal Br. 1–17; Final Act 1. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as INTUIT INC. Appeal Br. 2.
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Introduction
Appellant’s Specification describes that embodiments of the invention
are directed to multiple features, including “presenting taxpayers or users of
an on-line tax preparation application with options for how to enter data into
an electronic tax return including the option of imaging or taking a
photograph of a tax document,” “secure transfer and processing of images of
tax documents,” and use of “different computing devices such that the
document that is utilized to acquire and transmit a tax document image for
processing and importation into an electronic tax return is not the computing
device that was utilized to initiate preparation or prepare the electronic tax
return.” Spec. ¶ 1 (“Thus, the electronic tax return can be prepared utilizing
different types of computing devices, while providing for secure transfer and
processing of tax document images.”); see also id. ¶¶ 2–14, Fig. 2.
Claim 61, the only independent claim, is representative:
61. A computer-implemented method, comprising:
a host computer, in communication through respective
networks with a first computing device of a preparer and an
intermediate computer, executing an on-line tax preparation
application for access by a browser of the first computing
device and for utilization by the preparer to enter data into an
electronic tax return;
the host computer receiving a request by the preparer
for the host computer to populate the electronic tax return with
data, wherein the request is received by the host computer via
the online tax preparation application and from the first
computing device;
in response to the request, the host computer generating
and transmitting authentication data in a manner that a second
computing device of the preparer can receive the
authentication data, wherein the second computing device is
different than the first computing device;
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an intermediate computer establishing an authenticated
and secure network connection with the second computing
device using the authentication data generated by the host
computer;
receiving at the intermediate computer via the network
connection an image of a tax document acquired by the second
computing device;
the intermediate computer processing the image;
the host computer receiving a result of processing the
image from the intermediate computer; and
the host computer, by the on-line tax return preparation
application, populating at least a portion of the electronic tax
return based at least in part upon the result.
Appeal Br. 13 (Claims App’x).
Rejections2 & References
The Examiner rejected claims 61, 63, 67–73, and 79–84 under 35
U.S.C. § 103 as unpatentable over Shaw (US 8,606,665 B1; Dec. 10, 2013)
and Vazquez (US 9,172,699 B1; Oct. 27, 2015). Final Act. 3–9.
The Examiner rejected claims 62 and 64–66 under § 103 as
unpatentable over Shaw, Vazquez, and Wong (US 2002/0080200 A1; June
27, 2002). Final Act. 9–10.
The Examiner rejected claims 74–76 under § 103 as unpatentable over
Shaw, Vazquez, and Haulund (US 2013/0173915 A1; July 4, 2013). Final
Act. 10–11.

2 The Examiner’s Answer withdraws a rejection of all pending claims under
35 U.S.C. § 101. See Ans. 12 (stating that “[b]ased upon new §101 guidance
provided by the USPTO since the final rejection was issued on 5/10/2018,
the previously asserted §101 rejection is withdrawn” (citing “USPTO memo
- The 2019 Revised Patent Subject Matter Eligibility Guidance issued on
1/07/2019”)).
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The Examiner rejected claims 77 and 78 under § 103 as unpatentable
over Shaw, Vazquez, and Degraeve (US 2001/0049274 A1; Dec. 6, 2001).
Final Act. 12.
ANALYSIS
In rejecting claim 61, the Examiner finds Shaw discloses (a) a single
user computer that provides functionality for both the “first computing
device” and “second computing device,” and (b) a single website server that
provides functionality for both the “host computer” and “intermediate
computer.” Final Act. 3–4. The Examiner then determines it would have
been obvious to an artisan of ordinary skill (a) to use two of Shaw’s user
computers, one as the first computing device and the other as the second
computing device, and (b) to split the functionality of Shaw’s website server
into two servers, one for providing the host computer functionality and the
other for providing the intermediate computer functionality. Id. at 4–5;
(citing MPEP §§ 2144.04(VI)(B)3 (“Duplication of Parts”), (V)(C)
(“Making Separable”)). Appellant contends the Examiner errs because it
would have been necessary to do more than simply duplicate and separate
parts from Shaw to arrive at claim 61, and the Examiner does not explain
how or why an artisan of ordinary skill would have been motivated to make
the necessary modifications. Appeal Br. 10–12.
The Examiner responds by giving an example of using two instances
of Shaw’s user computer—as a home personal computer and an office work

3 The rejection discusses the substance of MPEP § 2144.04(VI)(B) but
mistakenly identifies it as (VI)(A). This is a harmless error; Appellant
identifies this mistake in the Appeal Brief and presents arguments based on
the correct MPEP subsection. See Appeal Br. 10–11; Ans. 13.
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computer—for claim 61’s first and second computing devices. Ans. 15
(finding that basic accessibility considerations provide the motivation to use
two such computers). The Examiner also responds that the proposed split of
functionality of Shaw’s website server—into claim 61’s host computer and
intermediate computer—would have been an obvious use of distributed
computing. Id. (finding the inherent benefits of distributed processing
provide the motivation for such a modification). As Appellant replies,
however, and we agree, the Examiner’s example in the Answer “do[es] not
take into account the particular limitations of claim 61, which require the
host computer, intermediate computer and second comput[ing device] to
interact in a particular way.” Reply Br. 1.
In particular, claim 61 requires the host computer to receive a request
from the first computing device and then, “in response to the request, the
host computer generat[es] and transmit[s] authentication data in a manner
that a second computing device of the preparer can receive the
authentication data.” Claim 61 then requires that the “intermediate computer
establish[es a] . . . network connection with the second computing device
using the authentication data generated by the host computer.”
The Examiner does not sufficiently explain how or why using two
instances of Shaw’s user computer would result in claim 61’s specific
authentication sequence involving four separate devices. Certainly, “[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton,” and “[t]he obviousness analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, as
the analysis can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
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Inc., 550 U.S. 398, 421, 418 (2007). But “rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting Kahn). “The pertinence of each reference, if not apparent, must be
clearly explained.” 37 C.F.R. § 1.104(c)(2).
Here, we agree with Appellant that an ordinarily skilled artisan would
not have understood Shaw to teach or suggest an interrelated sequence for
establishing an authenticated connection with a second instance of its user
computer using both a host computer and an intermediate computer in
response to a request from a first instance its first user computer, as required
by claim 61. Reply Br. 1–3. Although the Examiner finds Vazquez teaches
an interrelated authentication of two user devices, Vazquez teaches doing so
using a single authentication server, i.e., there is no finding that Vazquez
teaches an authentication sequence involving separate host and intermediate
computers, as required by claim 61. See Final Act. 5; Ans. 13–15. On this
record, the Examiner’s determination for why artisans of ordinary skill
would have been motivated to modify Shaw as necessary to arrive at claim
61—because of “accessibility” and “the inherent benefits involved in
distributed processing” (Ans. 15)—are insufficient to fill the gap in the
teachings of Shaw and Vazquez.
Accordingly, we do not sustain the § 103 rejection of claim 61.
Because there are no findings in the rejections of the dependent claims that
cure the deficiency of the rejection of claim 61, we also do not sustain the
§ 103 rejections of claims 62–84.
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CONCLUSION
We reverse the 35 U.S.C. § 103 rejections of claims 61–84.
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
61, 63, 67–
73, 79–84 103 Shaw, Vazquez
61, 63,
67–73,
79–84
62, 64–66 103 Shaw, Vazquez, Wong 62, 64–66
74–76 103 Shaw, Vazquez, Haulund 74–76
77, 78 103 Shaw, Vazquez, Degraeve 77, 78
Overall
Outcome 61–84
REVERSED