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 1-11, and 13-20 are currently pending and are presented for examination on the merits.
Objections
Specification
The abstract of the disclosure is objected to for lacking sufficient description. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. Correction is required. See MPEP § 608.01(b).
Claims
The claims are objected to for inclusion of line numbering that frustrates copying and pasting. It is asked that future claim sets exclude line numbering.
At Claim 1, please change the first instance of “with the one or more third-party systems” to the indefinite (i.e, “with one or more . . .”), and the second instance to the definite. Please change the second instance of “a computing system” to “the computing system” if referring to the same system. Appropriate correction is required.
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 obtaining third-party data, identifying a tax significant event, and generating a journal entry of the event. These are long-standing commercial practices previously performed by humans (e.g., accountants, tax payers, taxing authorities, etc.) manually and via generic computing. Moreover, they recite business methods that are transactional and economic in nature. 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—a system, an apparatus, a non-transitory computer-readable medium, a computing system, one or more processors, an API, 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 (e.g., the more detailed limitations/steps of the invention) 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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claims 1-8, 11, 12, 14, 19, and 20 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by US 2015/0120519 to Collins et al.
With respect to Claims 1, 19, and 20, Collins teaches an apparatus/system comprising one or more processors ([0023]) and a non-transitory computer-readable medium for performing operations ([0023]), and a method (FIGS. 1-3), comprising: communicating, by a computing system, with the one or more third-party systems using an application programming interface (API) ([0031]; claim 6 therein); autonomously obtaining, with a computing system and via the API, third-party data from one or more third-party systems ([0026];[0029]); autonomously identifying, with the computer system, from the third-party data, one or more tax-significant events for an entity ([0005];[0021], event; [0023-29]); and autonomously generating one or more accounting journal entries for the entity in the computing system, based at least in part on the identified one or more tax-significant events ([0005];[0007];[0021-29]).
With respect to Claim 2, Collins teaches wherein the tax data comprises state and/or local income tax data for one or more jurisdictions, property tax data for one or more jurisdictions ([0021]), or payroll tax data.
With respect to Claim 3, Collins teaches wherein the one or more third-party systems comprise one or more systems operated by one or more state and/or local tax authorities ([0021]).
With respect to Claim 4, Collins teaches autonomously determining, with the computer system, that the one or more tax-significant events are significant to a plurality of taxing jurisdictions. ([0002];[0005])
With respect to Claim 5, Collins teaches autonomously apportioning, with the computer system, the one or more tax significant events among the plurality of taxing jurisdictions. ([0005])
With respect to Claim 6, Collins teaches wherein apportioning the one or more tax significant events comprises generating one or more tax journal entries or reclassifications associated with each of the plurality of taxing jurisdictions. ([0001];[0035], claim 2 therein)
With respect to Claim 7, Collins teaches generating, with the computer system, one or more financial documents (reports) based on the apportionment of the tax significant events. [0007]
With respect to Claim 8, Collins teaches wherein the one or more financial documents comprises a financial statement, a financial statement lead, an adjusted trial balance, a tax trial balance, a tax lead and/or a tax return. ([0006];[0007])
With respect to Claim 11, Collins teaches wherein the plurality of taxing jurisdictions comprise one or more state jurisdictions and/or one or more local jurisdictions. [0027]
With respect to Claim 12, Collins teaches wherein obtaining third-party data from one or more third-party systems further comprises communicating with the one or more third-party systems using an API. [0031]
With respect to Claim 14, Collins teaches autonomously generating, from the third-party data, one or more filing deadlines for an entity ([0020]); storing, with a computer system, the one or more filing deadlines in a filing center of an accounting system ([0020]); and displaying for a user, a user interface comprising a dashboard showing one or more of the filing deadlines stored in the filing center ([0020];[0024];[0052]); receiving input from the user; and in response to the input from the user, performing, with the computer system, one or more procedures to satisfy one of the filing deadlines ([0020]).
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 9 and 10 are rejected under § 103 as being unpatentable over Collins, in view of US 2019/0340703 to West et al.
With respect to Claim 9, Collins fails to expressly teach, but West teaches autonomously determining, with the computer, that an entity associated with the one or more tax-significant events lacks sufficient identification or registration information in at least one of the plurality of taxing jurisdictions. [0071] West discusses the challenges of tackling a VAT system application in a distributed ledger technology. [0009] It would have been obvious to one of ordinary skill in the art to modify Collins to include determining insufficient identification or registration especially with respect to VAT and DLT.
With respect to Claim 10, autonomously performing, with the computer, one or more procedures to remedy the lack of sufficient identification or registration information, the one or more procedures comprising: notifying a user of the lack of sufficient identification or registration information; autonomously filing one or more documents with at least one of the taxing jurisdictions; autonomously preparing a document for a user to file with at least one of the taxing jurisdictions; or autonomously preparing instructions for a user to follow to remedy the lack of sufficient identification or registration information. [0071] Under the same rationale as Claim 9, it would have been obvious to one of ordinary skill in the art to modify Collins to include this limitation taught by West.
Claim 13 is rejected under § 103 as being unpatentable over Collins, in view of US 2003/0195780 to Arora et al.
With respect to Claim 13, Collins fails to expressly teach, but Arora teaches storing, with the computing system, non-accounting data that is not directly related to any accounting transactions and is not directly tax-significant; autonomously employing, with the computer system, the non-accounting data to perform one or more accounting tasks. ([0050]) Arora discusses the need for visibility and control of financial allocation across a global enterprise. [0003-07]. It would have been obvious to one of ordinary skill in the art to modify Collins to include storing and employing non-accounting data to perform one or more accounting tasks.
Claims 15-18 are rejected under § 103 as being unpatentable over Collins, in view of US 5,285,384 to Gineris.
With respect to Claim 15, Collins fails to expressly teach, but Gineris teaches obtaining, at the computer system, an indication of a net check transaction comprising a net check provided to an employee; autonomously identifying with the computer system the transaction as a net check has transaction, based at least in part on the indication; and autonomously notifying a payroll system of the net check transaction; and receiving, at the computer system from the payroll system, additional information about the net check transaction, the additional information comprising a gross amount of the net check transaction. (col 1, ln 20-50) Gineris discusses the need to simplify tax withholding and consolidate it for the employer. (col 1, ln 60-col 2, ln 5) It would have been obvious to one of ordinary skill in the art to modify Collins to include these limitations taught by Gineris in order to help consolidate employer tax withholding systems.
With respect to Claim 16, Collins teaches wherein obtaining the indication of the net check comprises one or more of the following operations: receiving the indication at the computer system from a business accounting system, wherein the business accounting system is integrated with the computing system, separate from the computer system, and/or operated by a third party; accessing a business accounting system with the computer system via an API ([0031]) to obtain the indication, wherein the business accounting system is integrated with the computing system, separate from the computer system, and/or operated by a third party ([0026]); or receiving user input at the computer system, the user input providing the indication. ([0020]) Under the same rationale as Claim 15, it would have been obvious to one of ordinary skill in the art to modify Collins to include this limitation taught by Gineris.
With respect to Claim 17, Collins teaches autonomously paying, by the computer system, the federal government an amount of federal employer taxes owed, paying the one or more state governments an amount of state employer taxes owed to each of the one or more states, and/or paying the one or more local governments an amount of local employer taxes owed to each of the one or more localities. ([0020];[0026])
Collins fails to expressly teach, but Gineris teaches autonomously paying, by the computer system, a federal government an amount of federal taxes withheld (Abstract), paying one or more state governments an amount of state taxes withheld for each of one or more states, and/or paying one or more local governments an amount of local taxes withheld for each of one or more localities. Under the same rationale as Claim 15, it would have been obvious to one of ordinary skill in the art to modify Collins to include this limitation taught by Gineris.
With respect to Claim 18, Collins teaches autonomously generating, with the computing system, a reclassifying transaction (Abstract; [0032], classification rules;[0035]). Gineris teaches the context of net check transaction and a grossed-up amount.
Response to remarks
Applicant’s remarks submitted on 11/03/2025 have been fully considered, but are not persuasive where objections/rejections are maintained. The claims are substantively unamended, except Claim 8’s scope has been raised to Claim 1. The double patenting rejection has been overcome by the Terminal Disclaimer filed on 11/3/2025. The § 101 rejection is maintained because the entirety of the method steps recite a long standing commercial practice (e.g, tax filing preparation), wherein non-accounting data is obtained from third parties and used to discover a tax significant event. The specification provides examples of “non-accounting data,” including real estate purchases ([0009]). Filing taxes is a long standing commercial practice comprising these steps. As per the prior art rejections, Gross expressly teaches the use of an API, and consideration of non-accounting data from a third-party (e.g., real property information from a database). 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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/WILLIAM J JACOB/Examiner, Art Unit 3696