ARIEDETAILED ACTION
Status of Claims
This action is in reply to the RCE filed on June 10, 2026.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1, 5, 8-9, 11, 15 and 18-20 have been amended.
Claims 1-20 are currently pending and have been examined.
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 10, 2026 has been entered.
Response to Amendments
Applicant’s amendments to claims 1, 5, 8-9, 11, 15 and 18-20 have been acknowledged.
Response to Arguments
Applicant’s arguments have been considered, but not found persuasive. Applicant argues:
The independent claims recite a specific implementation that is a technological improvement over the prior art.
Examiner’s Response: The claims describe a system for filtering tax data to generate reports which is a method of organizing a human activity (commercial/legal interactions-obligations). Also, filtering content is considered a method of organizing a human behavior. The computers are used in their ordinary capacity as a tool to apply the abstract idea. There is no new technology, special machinery or any technological improvement claimed. This judicial exception is not integrated into a practical application. The computers are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using generic computer components. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Simply implementing the abstract idea on a generic computer environment is not a practical application of the abstract idea and does not take the claim out of the method of organizing a human activity grouping.
Similar to BASCOM, the instant claims present a technology-based solution of filtering content.
Examiner’s Response: The facts considered in BASCOM are different to applicant’s invention. In Bascom, the Federal Circuit ruled that a software based, customizable, internet content filtering system installed on a remote Internet Service Provider server is patent eligible. Although filtering is an abstract idea, the specifically arranged, technical and customizable nature of the invention, made it non-abstract and inventive. On Applicant’s invention, the limitations regarding periodically importing data is simply data gathering. As per 2106.05 (g) data gathering is an insignificant extra solution activity. It is conventional in the art to periodically update databases. Simply appending conventional activities at a high level of generality to an abstract idea is not enough to confer eligibility.
It would be impossible for a human to accurately process the amount of data recited in the claims.
Examiner’s Response: Merely using a general computer to replace or automate human work is not enough to confer eligibility. Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer"). See MPEP 2106.04(a)(2)(III). It is important to keep in mind that an improvement in the abstract idea itself is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology. To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform a method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. See MPEP § 2106.05(f) for more information about mere instructions to apply an exception.
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.
Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without “significantly more.”
Regarding Claims 1, 11 and 20, the claims describe a system for filtering tax data to generate reports which is a mental process (observation/evaluation) a method of organizing a human activity (commercial/legal interactions-obligations) and organizing human behavior (rules, instructions). The limitations on periodically importing data (data gathering), generating a report, importing new and/or changed indirect tax rules, identifying affected products, filtering a report, generating a report, outputting/displaying information and receiving an input could be all performed in the human mind and/or with the help of paper and pencil. Other than reciting computing devices, a memory, a database and a user interface, nothing in the claim precludes the steps for being performed in the human mind and/or the help of paper and pencil. This judicial exception is not integrated into a practical application. The computers are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using generic computer components. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Simply implementing the abstract idea on a generic computer environment is not a practical application of the abstract idea and does not take the claim out of the mental process and method of organizing a human activity grouping. The claims are directed to an abstract idea.
The claims do not include additional elements that even in combination are sufficient to amount to significantly more than the judicial exception. As discussed above, with respect to integration of the abstract idea into a practical application, the additional element of using computers to perform the importing, generating, identifying, filtering, outputting, displaying and receiving steps amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. There is no new technology or any technological improvement involved. The computers are used in their ordinary capacity. The claims are not patent eligible.
Regarding dependent claims 2-10 and 12-19, these claims are directed to limitations which serve to limit the components, processing steps and the information used. These claims neither introduce a new abstract idea nor additional limitations which are significantly more than an abstract idea. They provide descriptive details that offer helpful context, but have no impact on statutory subject matter eligibility.
Therefore, the limitations on the invention, when viewed individually and in ordered combination are directed to in-eligible subject matter.
Allowable Subject Matter
Claims 1-20 are allowable over prior art and would be allowed if 101 rejections are overcome. Best reference found Nadler, describes a universal tax engine comprising a database that stores current tax tables, customer data, exceptions and the like to facilitate the calculation of transactional taxes. Nadler describes looking up and applying current tax rules and appropriate tax rates. However the specific limitations regarding the configuration of a tax engine server periodically importing customer sales tax calculation history data from a customer sales tax calculation history database; import new and/or changed indirect tax rules for a selected time period from a monthly data update hosted at a third-party tax research database; receive an instruction from a client computing device to identify a subset of taxable products affected by the monthly data update of indirect tax rule changes; filter the product category report with the monthly data update of the indirect tax rule changes; generate a legislative change report indicating product categories, associated taxable products affected by the indirect tax rule changes; and output the legislative change report to the client computing device, in combination with the other limitations on independent claims 1, 11 and 20 are novel and non-obvious over the prior art cited.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENISSE Y ORTIZ ROMAN whose telephone number is (571)270-5506. The examiner can normally be reached Monday-Thursday 9-7.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fahd A Obeid can be reached at 571-270-3324. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DENISSE Y ORTIZ ROMAN/Examiner, Art Unit 3627 /ARIEL J YU/Primary Examiner, Art Unit 3627
Prosecution Insights