Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1-20 are currently pending and are presented for examination on the merits.
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 they recite non-patentable subject matter under MPEP § 2106, e.g., the 2019 PEG, October update. More particularly, the claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally, MPEP § 2106; Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under MPEP § 2106, Step 1, the claimed invention, taking the broadest reasonable interpretation, recites a process (i.e., a method), machine (e.g., apparatus, system, etc.), article of manufacture (e.g., a non-transitory computer readable medium) or composition of matter, and as such, is patent eligible.
Under MPEP § 2106, Step 2a-prong 1, Claims 1-20 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps is directed towards processing tax information and payments including verifying tax payment compliance with a taxing authority, and identifying an anomaly when a tax filing condition is not met. This is a long-standing commercial practice previously performed by humans (e.g., businesses/corporations, compliance officers, tax payers, etc.) manually and via generic computing. For example, tax payers have long authorized and instructed another (individual (e.g., accountant) or server) to pay a quarterly tax payment. Previously, the method steps were performed equivalently by a human(s) using mental processing, verbally, and telephonically. As such, the inventions include an abstract idea under § 2106, and Alice Corporation.
Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure—system, at least one processor, a memory, a taxpayer device, a systems server, a tax authority server, etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)) and/or generally instruct an artisan to apply it (the method) across generic computing technology. A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). That is to say, the claims are not directed to a new software or computer, but rather employs pre-existing software to do what’s been previously done, albeit less efficiently or slower. “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements offered by the dependent claims either further delineate the abstract idea add further abstract idea(s), adds insignificant extra-solution activity, or further instruct the artisan to apply it (the abstract idea(s)) across generic computing technology. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea).
Courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-20 are rejected under 35 U.S.C. § 103 as being unpatentable over US 2008/0010178 to Savard, in view of US 2012/0036053 to Miller.
With respect to Claims 1, 9, and 17, Savard teaches a device for directly processing tax information and payment (FIGS. 1-2), comprising: a collection module configured to linking the taxpayer profile to a pre-authorized tax payment digital server ([0024], paying entities module); a processing module ([0024], processing module) configured to perform a method, a method for directly processing tax information and payment (FIGS. 4-8), and a system for directly processing tax information and payment (Abstract; FIG. 1-3), comprising: at least one processor; a memory, connected with the at least one processor (FIG. 1; [0052]); a taxpayer device (FIG. 1) including a taxpayer profile ([0090]); a systems server ([0052]), said device, method and system configured to: link the taxpayer profile to a pre-authorized tax payment digital server ([0065];[0097]); extract taxpayer information from the taxpayer profile in the pre-authorized tax payment digital server (FIG. 4), wherein the taxpayer information includes a taxpayer bank account number and taxpayer accounting information ([0010];[0097];[0104]); generate a tax payment instruction from a taxpayer device associated with the taxpayer profile ([0054], requests for tax payment teaches generate response/instruction to pay); generate a taxpayer information package from the tax payment instruction and the taxpayer information (Abstract, see information module throughout), wherein the taxpayer information package is a computer file (Abstract, see processing module throughout); transmit the tax payment instruction to the pre-authorized tax payment digital server (Abstract, see paying entities module; [0014];[0092]); transmit the tax payment instruction on compliance to a tax authority server (FIGS. 1, 2); and a tax authority server for receiving the tax payment instructions (FIGS. 1,2).
Savard fails to expressly teach the information package is a computer file that includes information for processing a tax return; and validating the tax payment instruction . . . to verify compliance of the instruction to the pre-stored tax filing condition. Miller teaches verifying compliance related to tax filing conditions ([0004];[0020-21];[0028-29]), and information file including data for processing a tax return ([0012];[0052]). Savard fails to expressly teach, but Miller teaches raising an anomaly (i.e., discrepancy) when the tax payment instruction does not comply with the pre-stored automatic tax filing condition, wherein the anomaly includes details on the pre-stored automatic tax filing condition not met ([0107];[0112];[0142]); and automatically transform the tax payment instruction to comply with the pre-stored automatic tax filing condition ([0080];[0118];[0142];[0166]). Miller discusses the inadequacies of conventional paper tax collection methods including unreliable and being prone to manipulation. [0015]. As such, it would have been obvious to one of ordinary skill in the art to modify Savard to include these limitations as taught by Miller, in order to provide a more reliable methodology.
With respect to Claims 2, 10, and 18, Savard teaches wherein the systems server is further configured to unpackage the taxpayer information package to generate the taxpayer information (see spec ¶ [0027] discussing “unpackaging”). [0207], separating into tax reserves, operations and volumes teaches unpackaging tax payer information.
With respect to Claims 3, 11, and 19, Savard fails to expressly teach, but Miller teaches wherein the systems server is further configured to: raise an alert when the tax payment instruction is not performed or the anomaly is not rectified (FIG. 6, Report Generation Module (see reporting discrepancies throughout); [0010]; [0067], failure to file is an anomaly not complying with pre-stored tax filing conditions). Under the same rationale as Claim 1, it would have been obvious to one of ordinary skill in the art to modify Savard to include this limitation taught by Miller.
With respect to Claims 4, 12, and 20, Savard teaches wherein the pre-stored automatic tax filing condition includes at least one of a digital file format ([0054];[0069]), a business number format ([0054];[0069]), a reporting number format ([0054];[0069]), a filing date ([0049], due date), a reporting period ([0012]), a tax rate ([0053]), a data parameter ([0111]), a net income ([0165]), and a tax payment certification ([0057]).
With respect to Claims 5, and 13, Savard teaches wherein the pre-stored automatic tax filing condition includes either one or more of the file date to be within the reporting period ([0048], punctual) and the tax rate to comply with a net income.
With respect to Claims 6, and 14, Savard fails to expressly teach, but Miller teaches wherein the systems server is further configured to encrypt the tax payment instruction based on a pre-set encryption protocol. [0026] Under the same rationale as Claim 1, it would have been obvious to one of ordinary skill in the art to modify Savard to include this limitation taught by Miller.
With respect to Claims 7, and 15, Savard teaches wherein the system further comprises a bank server configured to transfer a tax amount to a tax authority account associated with the tax authority server. [0048];[0065]
With respect to Claims 8, and 16, Savard teaches wherein the taxpayer accounting information includes a net income, a sales tax number, a taxpayer name, a taxpayer address, ([0127-149]). Savard fails to expressly teach, but Miller teaches a taxpayer income document so that key detail are extracted to process the payment (Abstract;[0024-25]). Under the same rationale as Claim 1, it would have been obvious to one of ordinary skill in the art to modify Savard to include this limitation taught by Miller.
Response to remarks
Applicant’s remarks submitted on 9/24/2025 have been fully considered, but are not persuasive, where objections/rejections are maintained. The amendments overcome the outstanding objections to the specification and drawings. The claim amendments overcome the claim objections, and primarily raise the original scope of amended Claim 3, regarding detecting of an anomaly. As per § 101, raising the deleted scope (i.e., determining an anomaly when the tax payment instruction does not comply with pre-stored tax filing conditions, etc.) fails to offer an innovative concept or significantly more by itself. Many prior art system were configured to flag, or report a discrepancy prior to filing a tax return. Miller, for example, discusses discrepancies throughout. Moreover, automatically transforming or fixing the instruction so as to comply with the tax filing condition was well-known, routine, and conventional at the time of filing. (see prior art references of record). The present invention does not improve the functioning of a computer or technology; rather it is a business method being applied across the generic computing structure recited in a broad and general sense. Cases such as Enfish are inapposite to the instant invention. Tax preparation software has long existed to provide secure extraction of taxpayer information. Upon traversal, Applicant is asked to specify what does its tax preparation software do that is an innovative concept. It is noted that TAXACT® for example, recalls and extracts tax payer information from prior years, enables the tax payer to input current year information and instruction, then uses said information to generate a tax payer package (Form 1099 and addenda), and generates flags (e.g., anomalies) where appropriate. As per the prior art rejection, Miller further teaches determination of discrepancies throughout, including instructions to pay an income not in compliance with pre-stored rental income information (i.e., tax filing condition). As used herein, a discrepancy is equivalent to an anomaly. Based on the teachings of Savard and Miller, one of ordinary skill in the art would have been taught each and every limitation of the recited claims (e.g., teaching tax forms, auditors, verifying tax revenues all would teach making tax payments). Please note that the applied reference(s) need not use the same terminology, or disclose the limitation verbatim, and also that the entirety of a prior art reference is to be applied to the respective claim(s), such that the pinpoint citations above are exemplary and provided for Applicant’s benefit; other locations within the applied reference(s) may further support the rejection. MPEP 2141.02(VI).
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart can be reached on 5712723955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J JACOB/Examiner, Art Unit 3696