DETAILED ACTION
Status of the Claims
1. This action is in reply to the application filed September 13, 2023.
2. Claims 41-51 are currently pending and have been examined. As Applicant has not specified any claims numbered Claims 1-40, these claims will be treated as cancelled claim numbers for purpose of examination.
3. Replacement drawings for Figures 1-3 were submitted on October 31, 2023. These Replacement Drawings have not been accepted.
4. A replacement specification was submitted on October 31, 2023. This replacement specification has been accepted.
Notice of Pre-AIA or AIA Status
5. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
6. The drawings are all objected to because the replacement drawings have broken text and feature a text size that is too small for legible reproduction.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
7. Claims 41-51 are objected to because of the following informalities:
- Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. (See MPEP 608.01(m))
For instance, in Claim 41, as to the form of the claims, at the end of step a to e the claim there is currently a period. This is improper. Each of the plurality of steps of Claim 41, Examiner suggests using a semi-colon to separate the sub steps a to e.
Further, the substeps and further claims also use capital letters within the limitations which is only proper in the case of proper nouns, titles, days of the week, month, and holidays and the first word of sentence.
Appropriate correction is required.
Claim Interpretation – Broadest Reasonable Interpretation
8. In determining patentability of an invention over the prior art, all claim limitations have been considered and interpreted using the “broadest reasonable interpretation consistent with the specification during the examination of a patent application since the applicant may then amend his claims.” See In re Prater and Wei, 162 USPQ 541, 550 (CCPA 1969); MPEP § 2111. Applicant always has the opportunity to amend the claims during prosecution, and broad interpretation by the examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified. See In re Prater, 162 USPQ 541, 550-51 (CCPA 1969); MPEP § 2111. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 26 USPQ2d 1057 (Fed. Cir. 1993). See also MPEP 2173.05(q) All claim limitations have been considered. Additionally, all words in the claims have been considered in judging the patentability of the claims against the prior art. See MPEP 2143.03.
Claim limitations that contain statement(s) such as “if, may, might, can, could”, are treated as containing optional language. As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted.
Claim limitations that contain statement(s) such as “wherein, whereby”, that fail to further define the steps or acts to be performed in method claims or the discrete physical structure required of system claims.
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. see MPEP § 2103(I)(C); In re Johnson, 77 USPQ2d 1788 (Fed Cir 2006). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
The subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined.
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. see MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. see MPEP §2013(I)(C).
Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009). See MPEP 2111.04, 2143.03.
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art. In other words, if the prior art structure is capable of performing the intended use, then it meets the claim.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble (MPEP 2111.02);
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby” (MPEP 2111.04)
Contingent limitations (MPEP 2111.04)
Printed matter (MPEP 2111.05) and
Functional language associated with a claim term (MPEP 2181)
Examiner notes that during examination, “claims … are to be given their broadest reasonable interpretation 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.” See In re Bond, 15 USPQ 1566, 1568 (Fed. Cir. 1990), citing In re Sneed, 218 USPQ 385, 388 (Fed. Cir. 1983). However, "in examining the specification for proper context, [the examiner] will not at any time import limitations from the specification into the claims". See CollegeNet, Inc. v. ApplyYourself, Inc., 75 USPQ2d 1733, 1738 (Fed. Cir. 2005). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984), citing In re Prater, 162 USPQ 541, 550 (CCPA 1969).
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following language is interpreted as not further limiting the scope of the claimed invention.
The preamble of instant claim 41 recites "[a] method for processing “Forms 4684 Baskets” comprised of Forms 4684 and other essential and required tax forms and schedules”
The preamble of instant claim 49 recites “[a] method to achieve self-sustainability comprised of the legal execution of a Cooperative Agreement between the IRS and the Recipient.”
In general, a preamble limits the invention if it recites essential structure or steps, or if it is "necessary to give life, meaning, and vitality" to the claims. Pitney Bowes, Inc. v. Hewlett-Packard Co. 51 USPQ2d 1161 (Fed. Cir. 1999), Catalina Marketing International Inc. v. Coolsavings.com Inc., 62 USPQ2d 1781 (Fed. Cir. 2002). Conversely, where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or an intended use for the invention, the preamble is not a claim limitation given patentable weight. Rowe v. Dror, 42 USPQ2d 1550 (Fed. Cir. 1997); Catalina Marketing International Inc. v. Coolsavings.com Inc., 62 USPQ2d 1781 (Fed. Cir. 2002); Bell Communications Research, Inc. v. Vitalink Communications Corp., 34 USPQ2d 1816 (Fed. Cir. 1995) If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) See MPEP 2111.02
In the instant case of Claim 41, “for processing “Forms 4684 Baskets” comprised of Forms 4684 and other essential and required tax forms and schedules” as recited in the preamble only states a purpose and/or the intended use of the invention and accordingly is not being assigned any patentable weight.
In the instant case of Claim 49, “to achieve self-sustainability comprised of the legal execution of a Cooperative Agreement between the IRS and the Recipient” as recited in the preamble only states a purpose and/or the intended use of the invention and accordingly is not being assigned any patentable weight.
Similarly in the instant case, the following italicized limitations are expressing the intended result of a process step positively recited and are not given weight:
As in Claim 41:
Forming a procedure for the receipt of mailed and electronically submitted tax forms and schedules by forming a network of mailing addresses and lockboxes.
Forming a procedure for posting mailed and electronically submitted tax returns by forming a shared workspace.
Forming a procedure for the maintenance of tax forms and schedules by forming a set of directories and folders on the shared workspace.
Forming a procedure for the review, examination, and approval of processed tax forms and schedules by forming a review, examination, and approval sub-process.
Forming a procedure for performing probabilistic and non-probabilistic analyses, and periodic reporting on overall task performance and status, invoicing, and progress on revolving account.
As in Claim 42:
wherein the IRS and the Recipient jointly design the network of addresses and lockboxes.
As in Claim 43:
wherein the network of addresses and lockboxes is determined pursuant to the geographical areas with the highest incidences of Federally declared casualties, disasters, and thefts.
As in Claim 44:
wherein mailed tax forms and schedules are converted to PDF, and, then, along with electronically submitted tax forms and schedules are posted to a shared workspace.
As in Claim 45:
wherein the tax forms and schedules are reviewed, redacted, and assigned a Control Number by IRS staff, and approved for review and examination by the Recipient.
As in Claim 46:
wherein the recipient creates the “Forms 4684 Baskets” and reviews and examines the tax forms through a set of procedures to assure completeness and accuracy, and sends notice of completion to IRS for final review, approval, and settlement.
As in Claim 47:
wherein the monitoring of the progress is done through a set of directories or folders as “Received”, “In-Process”, “Requiring Further Review and Examination”, and, “Completed”.
As in Claim 48:
wherein a set of procedures and steps are placed in service to perform probabilistic and non-probabilistic analyses such as statistical and data analysis to assess and report on task performance, status, invoicing, and status of revolving account.
As in Claim 50:
wherein the IRS and the Recipient agree to make severable and/or joint contributions from the IRS’s cost savings and the Recipient’s profits to move this method of operations towards self-sustainability.
As in Claim 51:
wherein the IRS and the Recipient agree to establish periodic reviews of the status of the revolving account to gauge progress and identify required adjustments.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
9. Claims 41-51 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claim set, as a whole, do not appear to present a cogent invention. Claim 41 broadcasts a method claim, however the limitations presented appear to be disjointed aspirations for procedures that are not disclosed by the specification or presented in a way that disclose an invention that can be replicated. There is no systemization presented and no specificity to the steps presented. Applicant is urged to draft claims, within the bounds of the specification, that present an invention that present a positively recited process that can result in a method claimed with specificity.
Similarly, Claim 49 broadcasts a method claim that does not disclose any steps to achieve the self-sustainability that Applicant recites as the intended use of the claim. The claim does not present any systemization or further steps to the claim outside of the preamble. Applicant is urged to draft claims, within the bounds of the specification, that present an invention that present a positively recited process that can result in a method claimed with specificity.
Because Claims 41-51 are so indefinite, substantial guesswork would be involved in determining the scope and content of these claims. see In re Steele, 134 USPQ 292 (CCPA 1962); Ex parte Brummer, 12 USPQ2d, 1653, 1655 (BPAI 1989); and In re Wilson, 65 USPQ 494 (CCPA 1970). However, in the interest of compact prosecution and, in so much as the claims can be best be understood given the asserted 35 U.S.C. 112 rejections, prior art pertinent to the disclosed invention has been referenced. Applicants are reminded they must consider all cited art under Rule 111(c) when amending the claims to conform with 35 U.S.C. 112. This is not an indication of a lack of prior art, rather this is an indication that the current claim instruction has made a search for the actual invention impossible at this juncture.
Dependent claims 42-48 and 50-51 are further rejected as based upon a rejected base claim.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
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.
10. Claims 41-51 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
ANALYSIS:
STEP 1:
Does the claimed invention fall within one of the four statutory categories of invention (process, machine, manufacture or composition matter?
Claim 41 recites a method claim. Claim 49 recites a method claim. The claims also have a separate rejection as being non-statutory (as shown below) however Examiner assumes that Applicant will rectify the claims to properly claim the invention as within statutory categories.
STEP 2A:
Prong One: Does the Claim Recite A Judicial Exception (An Abstract Idea, Law of Nature or Natural Phenomenon)? (If Yes, Proceed to Prong Two, If No, the claim is not directed to a judicial exception and qualifies as subject matter patent eligible material)
Claim 41 recites the abstract idea of processing Form 4684 baskets tax forms and schedules. This idea is described by the following limitations:
Forming a procedure for the receipt of mailed and electronically submitted tax forms and schedules by forming a network of mailing addresses and lockboxes.
Forming a procedure for posting mailed and electronically submitted tax returns by forming a shared workspace.
Forming a procedure for the maintenance of tax forms and schedules by forming a set of directories and folders on the shared workspace.
Forming a procedure for the review, examination, and approval of processed tax forms and schedules by forming a review, examination, and approval sub-process.
Forming a procedure for performing probabilistic and non-probabilistic analyses, and periodic reporting on overall task performance and status, invoicing, and progress on revolving account.
Claim 49 recites the abstract idea of a method to achieve self-sustainability comprised of the legal execution of a Cooperative Agreement between the IRS and the Recipient. This idea is only described by the preamble, which is noted above.
The Applicant Specification indicates that the application provides “for the receipt and processing of tax returns submitted electronically and by mail. (See Applicant Spec page 2, lines 2-3)
Under a broadest reasonable interpretation, the claims reflect no more than the idea of how to process Form 4684 baskets, a process that already is conducted by the IRS. As a result, the abstract ideas describe mental processes and certain methods of organizing human activity.
As to mental processes, the steps describe concepts performed in the human mind including an observation, evaluation, judgment and/or opinion (i.e., forming a procedure for the receipt of mailed and electronically submitted tax forms and schedules by forming a network of mailing addresses and lockboxes; forming a procedure for posting mailed and electronically submitted tax returns by forming a shared workspace; forming a procedure for the maintenance of tax forms and schedules by forming a set of directories and folders on the shared workspace; forming a procedure for the review, examination, and approval of processed tax forms and schedules by forming a review, examination, and approval sub-process; and forming a procedure for performing probabilistic and non-probabilistic analyses, and periodic reporting on overall task performance and status, invoicing, and progress on revolving account). These steps are performing a mental process in a (presumably) computer environment that recites limitations reciting forming procedures with the exception of a potentially implied (though not claimed) computer-implemented steps, there is nothing in the claims themselves that foreclose them from being practically performed by a human mentally.
As to certain methods of organizing human activity, the steps involve fundamental economic principles or practices; commercial or legal interactions; and/or managing personal behavior or relationships or interactions between people (i.e., forming a procedure for the receipt of mailed and electronically submitted tax forms and schedules by forming a network of mailing addresses and lockboxes; forming a procedure for posting mailed and electronically submitted tax returns by forming a shared workspace; forming a procedure for the maintenance of tax forms and schedules by forming a set of directories and folders on the shared workspace; forming a procedure for the review, examination, and approval of processed tax forms and schedules by forming a review, examination, and approval sub-process; and forming a procedure for performing probabilistic and non-probabilistic analyses, and periodic reporting on overall task performance and status, invoicing, and progress on revolving account). These steps are describing the practices of preparing taxes which is a fundamental economic practice, a legal obligation and managing personal behavior and following rules or instructions.
In the case of the instant claims, the claims recite no more than the idea of how Forms 4684 Baskets tax forms may be processed once submitted, potentially implementing (though not claiming) generic computer technology to form procedures for processing Form 4684 Baskets and associated tax forms and schedules. (Step 2A: Prong 1: Yes, the claims are abstract)
Prong Two: Does the Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application of the Exception? (If Yes, the claim is not directed to a judicial exception and qualifies as subject matter patent eligible material. If No, Proceed to Step 2B)
The claims do not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, are not applying the judicial exception with, or by use of a particular machine, are not effecting a transformation or reduction of a particular article to a different state or thing, and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
There is no systemization presented in either of the independent claims. Thus, the methods outlined in Claims 41 and 49 do not sufficiently tie the methods to a particular machine within the body of the claims. As such, the recitations are further failing to integrate the judicial exception into a practical application on this basis.
At best, the claims might reflect no more than mere instructions to apply the exception using a generic computer component. (See MPEP 2106.05(f)) Use of a computer in its ordinary capacity for economic or other tasks (e.g., to receive, store or transmit data) or simply adding a general-purpose computer or computer components after the fact to the abstract idea does not integrate a judicial exception into a practical application or provide significantly more.)
Accordingly, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, Claims 41 and 49 are directed to an abstract idea without a practical application. (Step 2A – Prong 2: No, the additional claimed elements are not integrated into a practical application)
STEP 2B: If there is an exception, determine if the claim as a whole recites significantly more than the judicial exception itself.
The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: i) receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added)); ii) performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims."); iii) electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log); iv) storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93; v) electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition); and vi) a web browser’s back and forward button functionality, Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015). (MPEP §2106.05(d)(II))
This listing is not meant to imply that all computer functions are well‐understood, routine, conventional activities, or that a claim reciting a generic computer component performing a generic computer function is necessarily ineligible. Courts have held computer‐implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amounts to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog (i.e., by hand or by merely thinking). On the other hand, courts have held computer-implemented processes to be significantly more than an abstract idea (and thus eligible), where generic computer components are able in combination to perform functions that are not merely generic. (MPEP §2106.05(d)(II) – emphasis added)
Below are examples of other types of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: recording a customer’s order, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244, 120 USPQ2d 1844, 1856 (Fed. Cir. 2016); shuffling and dealing a standard deck of cards, In re Smith, 815 F.3d 816, 819, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016); restricting public access to media by requiring a consumer to view an advertisement, Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014); identifying undeliverable mail items, decoding data on those mail items, and creating output data, Return Mail, Inc. v. U.S. Postal Service, -- F.3d --, -- USPQ2d --, slip op. at 32 (Fed. Cir. August 28, 2017); presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; determining an estimated outcome and setting a price, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; and arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining the price, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331, 115 USPQ2d 1681, 1699 (Fed. Cir. 2015) (MPEP 2106.05(d))
For the reasons identified with respect to Step 2A, Prong 2, claims 41 and 49 fail to recite additional elements that amount to an inventive concept. Assuming that there is some systemization or use of a computer (not claimed or disclosed), the use of a computer in its ordinary capacity for tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to the abstract idea does not integrate a judicial exception into a practical application or provide significantly more. (See MPEP 2106.05(f))
At very best, the steps could be receiving or transmitting data over a network (Symantec, TLI, OIP Techs – MPEP 2106.05(d)(II); performing repetitive calculations (Bancorp – MPEP 2106.05(d)(II); storing and retrieving information in memory (Versata, OIP Techs – MPEP 2106.05(d)(II) and electronically scanning or extracting data (Content Extraction – MPEP 2106.05(d)(II)– all of which have been recognized by the courts as well-understood, routine and conventional functions.
The claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known in the industry.
For the next step of the analysis, it must be determined whether the limitations present in the claims represent a patent-eligible application of the abstract idea. A claim directed to a judicial exception must be analyzed to determine whether the elements of the claim, considered both individually and as an ordered combination are sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself.
For the role of a computer in a computer implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of “well-understood, routine, [and] conventional activities previously known to the industry.” Further, “the mere recitation of a generic computer cannot transform a patent ineligible abstract idea into a patent-eligible invention.”
Applicant’s specification provides no computerization or systemization disclosure.
Even if there were generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities in the claims, this would amount to no more than implementing the abstract idea with a computerized system.
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. The collective functions appear to be implemented using conventional computer systemization.
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to no more than mere instructions to apply the exception using generic computer components. The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The independent claims 41 and 49 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 42-48 and 50-51 further define the abstract ideas presented in respective independent claims 41 and 49 and are further grouped as mental processes and certain methods of organizing human activities and are abstract for the same reasons and basis as presented above.
Dependent claim 44 further recites that the mailed tax forms and schedules are converted to PDF and then, along with electronically submitted tax forms and schedules are posted to a shared workspace. This implies systemization, however there is no actual recitation of systemization, just an implication. At best, this could be some sort of unclaimed systemization that might amount to mere instructions to apply the exception using a generic computer component. This step still describes mental processes and certain methods of organizing human activity.
No hardware components are recited, thus it is concluded that the claim is not utilizing any generic systemization as presented above. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Thus, Claims 41-51 should have been rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Prior Art of Record Not Currently Applied
Mascaro et al. (US PG Pub. 2017/0300933) (“Mascaro”) – discloses a method and system adaptively improving potential customer conversion rates, revenue metrics and/or other target metrics by providing effective user experience options to some users. (See Mascaro Abstract) The method and system selects the user experience options by applying user characteristics data to an analytics model and analyzes user responses to the user experience options to update the analytics models and to dynamically adapt the personalization of the user experience options. (See Mascaro Abstract)
Aladin (US PG Pub. 2023/0274372) (“Aladin”) – discloses a system for providing tax preparation services to a user over a communications network.
Donaldson et al. (US PG Pub. 2023/0027581) (“Donaldson”) – discloses a system to output a data structure, which in this case computes a tax return.
Conclusion
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/AMBREEN A. ALLADIN/Primary Examiner, Art Unit 3691 February 8, 2025