DETAILED ACTION
Status of Claims
The following is a Final office action in response to the communications received on January 14, 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 1-2, 5-12, 15-20 have been amended.
Claims 1-20 are pending and have been examined.
Response to Amendments
Applicant amendments to claims 1-2, 5-12 and 15-20 are acknowledged.
Response to Arguments
Applicant's arguments in view of 101 rejections 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. Conventional solutions to the above introduced problem of filtering indirect taxes on a customer-specific basis include simple comparisons of new tax rules to current tax rules and manual adjustments by tax professionals. Thus, similar to BASCOM, the instant claims present a technology-based solution of filtering content that overcomes the disadvantages of prior art filtering systems and amount to significantly more than an abstract idea.
Examiner’s Response: The facts considered in BASCOM are different to applicant’s invention. Applicant’s invention recites an improvement to the abstract idea which per MPEP 2106.05 (a) is not a technological improvement. The computers are used in their ordinary capacity as a tool to apply the abstract idea. There is no new technology or any technological improvement involved. 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 limitations of "periodically import customer sales tax calculation history data from a customer sales tax calculation history database" and "import customer configuration data from a customer configuration database" enable the claimed indirect tax legislation filtering to be customer- specific. Indeed, when compared to the claims at issue in BASCOM, the instant claims recite in much greater detail how the filtering is performed: importing customer sales tax calculation history data and customer configuration data (received from the second computing device, as recited in claims 8 and 9), generating a product category report from the customer data, importing new and/or changed indirect tax rules from a monthly update, and filtering the product category report with the monthly update of the indirect tax rule changes.
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, which bridged local and server-based filtering 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. In fact, considering the amount of data processed by the system in the instant claims, applicant would like to emphasize that the customer sales tax calculation history data is periodically imported by the first computing device, the product category report is generated prior to filtering with the indirect tax rule changes, and that the new and/or changes indirect tax rules are imported for a selected time period from the monthly data update.
Examiner’s Response: Merely using a general computer to replace or automate human work is not enough to confer eligibility. See 2106.05(a) – 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 the 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.
Applicant submits that the claims recite computer-implemented processes to determine calculations and data that will be affected by recent changes to tax rules. The claims are directed to ensuring the accuracy of a system and are not related to certain methods of organizing human activity, which include fundamental economic practices or principles, commercial or legal interactions, or managing personal behavior or relationships or interactions between people.
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. 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.
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, ranking categories, 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, ranking, 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 first computing device 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; receive an instruction from a second 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 second 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
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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.
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/DENISSE Y ORTIZ ROMAN/Examiner, Art Unit 3627
/ARIEL J YU/Primary Examiner, Art Unit 3627