DETAILED ACTION
1. The present application, filed on or after March 13, 2013, is being examined under the first inventor to file provisions of the AIA .
This application has a claim of priority to a parent application, Application No. 17/357,791, filed June 24, 2021.
Claims 1 - 20 are pending and examined as follows:
NOTE: interviews are welcome at any stage of prosecution. Please use the AIR form, the link for which can be found at the end of this action, to schedule the interview.
Claim Rejections – 35 USC § 101
2. 35 USC § 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture and composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
A. Rejection Based on Abstract Idea
Claims 1 - 20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Furthermore, this rejection is based on the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG).
B. Statutory Categories
Claim 1 is a method Claim and therefore falls into the category of a process. Claim 15 is a system Claim and also recites a memory and a processor and therefore falls into the category of machine/manufacture. Claim 19 recites a non-transitory CRM and also falls into the category of machine/manufacture.
C. The Claim Recites an Abstract Idea
Claim 1 is illustrative of the rejection of all claims.
Claim 1 recites the limitation:
“5causing presentation, by one or more computing devices of a service provider and via a user interface of an application executing on a mobile device of a user having an account maintained by the service provider, a first screen including a selectable icon, wherein selecting the selectable icon comprises a request for the service provider to generate a tax document on behalf of the user;”
This limitation, as drafted, is a process that, under its broadest reasonable interpretation, constitutes a method of organizing human activity, specifically, fundamental economic principles or practices. That is, analyzing this limitation in the context of the claim as a whole, it recites a process that falls within the grouping of abstract ideas comprising certain methods of organizing human activity. Fundamental economic principles or practices are examples of such methods. In this case, the fundamental economic principle or practice is the common practice of providing a computerized system for receiving requests from user/taxpayers to prepare a tax return document. This is a highly common commercial practice. It literally occurs millions of times each day, if not each hour during tax preparation season.
Furthermore, the mere nominal recitation of terms - such as “computing device” or “mobile device,” or “memory” - does not remove the claim from the category of common or abstract methods of organizing human activity.
Thus, Claim 1 recites a judicial exception, namely, an abstract idea.
D. The Claim Does Not Integrate the Abstract Idea into a Practical Application
Moreover, this judicial exception is not integrated into a practical application. The possible “additional limitations” recited in the Claim that must be considered are as follows:
responsive to receiving, by the one or more computing devices of the service provider and from the mobile device, an indication of a selection of the selectable icon,
causing presentation, via the application, of the tax document, wherein causing presentation of the tax document comprises:
automatically obtaining user data associated with a plurality of services accessible via the application and associated with the account,
wherein the user data is at least one of stored in a database associated with the service provider, wherein the user data comprises data processed by a payment processing service provided by the service provider, payroll data associated with a payroll service provided by the service provider, tax data associated with a tax service provided by the service provider, securities data associated with a securities brokerage service provided by the service provider, cryptocurrency data associated with a cryptocurrency brokerage service provided by the service provider, or loan data associated with a loan service provided by the service provider;
determining, based at least in part on the user data and a user profile associated with the account, a tax liability of the user;
based at least in part on the user data and the tax liability, generating the tax document; and
sending instructions to the application to present the tax document via a second screen of the user interface,
wherein the second screen follows the first screen without intervening screens.
Automatically obtaining user data and automatically preparing a tax document are common computerized steps. These are common and generic computer functions. They are simply and merely broad ideas or concepts and are recited as such in the Claim, without specificity. No additional computer components are mentioned in these limitations, and those quoted above are recited at a high level of generality. No other particular computer functions or computer component interactions within this system are recited.
Calculating a tax liability generated from the documents gathered and from a user profile, generating the relevant tax document, and displaying the document to the user are among the most common and generic computer functions. This is what computers do. There is no specificity nor special functionality assigned to these steps in the claim.
Analyzing these additional limitations individually, and taking the claim as a whole and as an ordered combination, it is clear that these additional limitations do not serve to integrate the abstract idea into a practical application. They do not recite a technological solution to a technological problem. They do not improve the functioning of the computer system itself. In fact, there are very few computerized system components or functions recited. Thus, these limitations fail to recite with specificity any technical function or any improvement to the functioning of the computer system itself – if any. Therefore, the claim lacks the specificity required to transform the claim from one claiming only an outcome or a result – generating a tax document - to one claiming a specific way of achieving that outcome or result.
Accordingly, the recitation of these generic components amounts to no more than mere instructions “to apply” the abstract idea exception using generic computer components. That is, the additional elements recited in the claim beyond the judicial exception(s) have been evaluated to determine whether those additional elements, considered individually and in combination, integrate the judicial exception(s) into a practical application. They do not.
E. Step 2B: The Claim Does Not Recite Significantly More than the Abstract Idea
This step involves the search for an “inventive concept.” However, it is clear from the case law and the MPEP that the considerations at issue are the same as those considered above with respect to the analysis of a practical application. See MPEP 2106.05(a) – (c) and (e). In other words, these analyses sharply overlap.
Therefore, based on the above analysis, the identified additional limitations do not provide “significantly more” than the abstract idea. The claim is therefore ineligible under §101. The other independent claims are, likewise, ineligible for the same reasons as they are virtually identical to Claim 1.
F. The Dependent Claims Do Not Recite Meaningful Additional Limitations
Similarly, Claim 2 recites the same abstract idea as Claim 1 by virtue of its dependency on Claim 1. Like Claim 1, this claim does not recite sufficient additional elements to integrate the abstract idea into a practical application. Claim 2 merely recites the abstract concept of managing a financial account.
Claim 3 merely recites the abstract concept of a transfer of funds with which to pay the tax liability.
Claim 4 merely recites the abstract concept of predicting tax consequences from a transaction.
Claim 5 merely recites the abstract concept of digital assets.
Claim 6 merely recites the abstract concept of cryptocurrency.
Claim 7 merely recites the abstract concept of performing a tax-related transaction.
Claim 8 merely recites the abstract concept of determining a tax consequence of a potential securities transaction.
Claim 9 merely recites the abstract concept of tax consequences of a cryptocurrency transaction.
Claim 10 merely recites the abstract concept of determining the tax consequences of various financial transactions.
Claims 11 - 20 are virtually identical to various of the aforementioned claims and are ineligible for the same reasons as set forth above.
None of these claims provide any additional meaningful limitations, non-generic computer components, or specific assignments of functionality among those components. Likewise, if at all, these claims recite only generic, computer-related limitations which are recited at such a high level of generality as to be devoid of any meaningful limitations. These limitations do not recite improvements in the functioning of the computer or to any other technology or technical field.
Therefore, these claims do not include additional elements that are sufficient to integrate the abstract idea into a practical application, nor do they amount to significantly more than the recited abstract idea because the additional elements, when considered both individually and as an ordered combination, constitute only a mere instruction to “apply” the abstract idea.
Thus, Claims 1 - 20 constitute ineligible subject matter under 35 USC § 101 as being directed to an abstract idea without more.
Claim Rejections - 35 USC § 103
4. 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.
Claims 1 – 20 are rejected under 35 U.S.C. §103 as being unpatentable over U.S. Patent Publication No. 2009/0012884 to Harman et al. (hereinafter “Harman”) in view of U.S. Patent Publication No. 2022/0318929 to Tavares et al., (hereinafter “Tavares”) and further in view of U.S. Patent No. 6,202,052 to Miller et al. (hereinafter “Miller”)
Broadest reasonable interpretation:
The Claims of a patent application must be “given their broadest reasonable interpretation consistent with the specification.” See MPEP §2111. Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification (e.g. the specification gives the term a special meaning). The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the relevant time.
Again, Claim 1 is illustrative of the broadest reasonable interpretation of all the Claims. Claim 1 recites, in part, the following:
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Thus, while using the open-ended transitional phrase “comprising,” Claim 1 ends the recited list of “data” with the disjunctive “or.” Referring to the specification, the relevant section reads as follows:
“ [0026] In various examples, the payment service system 108 can be or include an online platform for processing payments 126, providing a tax service 150, and/or providing a loan service 160, as described herein. The payment service system 108 or online platform can utilize or include one or more server computers, which can be referred to herein as platform servers or payment servers. (Emphasis Added)
Thus, the specification includes the possibility of using the disjunctive “or.” Therefore, in order to give the Claim its broadest reasonable interpretation, the list of data quoted above is considered to require any one of the list, but not all. In other words, since “or” is used in a disjunctive sense (meaning “one or the other, but not both”), the claim covers only any one of the listed elements. However, because the claim starts with “comprising,” it still allows for additional elements beyond the one chosen.
Discussion of Cited References:
The Harman system is in the same field of endeavor as the claimed invention, namely, the automatic preparation of tax documents from automatically gathering relevant tax related documents. The title is: Method and system for populating tax returns using aggregated data
The Abstract reads as follows:
“Some embodiments of the present invention provide a system that populates a tax return using employee information obtained from a human resources system and/or employee personal profile. During operation, this system obtains employee information associated with a user from the human resources system and/or employee personal profile and then partially populates the tax return using the employee information.” (Emphasis Added)
Thus, Harman teaches a service provider system – namely, a human resources or employee service provider system – and the automatic obtaining of information and the automatic preparation of a tax return. The process of Harman is illustrated as follows:
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Fig. 3 of Harman illustrates the process wherein the taxpayer’s information is automatically gathered and a tax return is prepared and presented to the taxpayer – presumably for filing – without any intervening screens or action by the taxpayer. See 0048 wherein the user/employee/taxpayer selects the option to have the tax return prepared/populated. This option is also taught as follows in Harman:
“[0015] In some embodiments, the system displays an option for populating the tax return to the user, wherein the tax return is populated based on a selection of the option for populating the tax return by the user.” (Emphasis Added)
No intervening display or option or selection is required of the user.
This result is described in Harman as follows:
“[0032] In one or more embodiments of the invention, an option is displayed to an employee to populate a tax return using the employee information in repository 104. This option may be displayed in human resources portal 108, or may be sent to the employee in an email, text message, instant message, and/or other communications medium. Upon selection of the option, a tax return is generated and partially populated using employee information found in repository 104. The employee may then be prompted to provide additional tax-related information to tax engine 106, and tax engine 106 may complete the tax return using the additional tax-related information. On the other hand, the employee may decline the option to populate his/her tax return using information found in repository 104 and may choose to fill in the information manually. The employee may also decline to use the tax preparation service provided by tax engine 106 and may choose another tax preparation method instead.” (Emphasis Added)
As illustrated in Fig. 3 above, the employee may opt to simply file the tax return when presented following step 314.
In Harman, the service provider is a human resources system, as explained in the Summary of the invention:
“SUMMARY
[0004] Some embodiments of the present invention provide a system that populates a tax return using employee information obtained from a human resources system and/or employee personal profile. During operation, this system obtains employee information associated with a user from the human resources system and/or employee personal profile and then partially populates the tax return using the employee information.” (Emphasis Added)
Therefore, Harman in view of Tavares in view of Miller teaches:
1. A computer-implemented method, comprising: causing presentation, by one or more computing devices of a service provider and via a user interface of an application executing on a mobile device of a user having an account maintained by the service provider, a first screen including a selectable icon, wherein selecting the selectable icon comprises a request for the service provider to generate a tax document on behalf of the user; and (See at least 0048 quoted above as to an option presented to the user and selectable by the user to have a tax document prepared. It is clear from the Summary para. 0004 quoted above that the user is an employee and of necessity would have an account and/or “profile” associated with the HR system. The user may engage in the HR system via a mobile phone as taught at 0026, and a person of ordinary skill in the art would readily understand that the selection would be made on the interface or display thereof via an appropriate icon. See 0015, 0032, and 0043.)
responsive to receiving, by the one or more computing devices of the service provider and from the mobile device, an indication of a selection of the selectable icon, causing presentation, via the application, of the tax document, (See at least Fig. 3 and 0004 reproduced above, as well as 0012 and 0015.)
wherein causing presentation of the tax document comprises: automatically obtaining user data associated with a plurality of services accessible via the application and associated with the account, wherein the user data is at least one of stored in a database associated with the service provider, wherein the user data comprises data processed by a payment processing service provided by the service provider, payroll data associated with a payroll service provided by the service provider, tax data associated with a tax service provided by the service provider, securities data associated with a securities brokerage service provided by the service provider, cryptocurrency data associated with a cryptocurrency brokerage service provided by the service provider, or loan data associated with a loan service provided by the service provider; (See at least 0017. This section teaches the automatic gathering of the user’s payroll data. As noted above in the broadest reasonable interpretation section, only one item on the list is sufficient to teach the limitation.)
determining, based at least in part on the user data and a user profile associated with the account, a tax liability of the user; (See at least 0004 as to the user’s profile. See also 0023 wherein it would be clear that preparing a tax return would, of necessity, require determination of the tax/refund due.)
based at least in part on the user data and the tax liability, generating the tax document; and (See at least 0023.)
sending instructions to the application to present the tax document via a second screen of the user interface, wherein the second screen follows the first screen without intervening screens. (See at least 00321 and 0048. It is clear that the user has an option to simply file the prepared tax return as displayed without any further or intervening displays or options. See also Fig. 3 above.)
Thus, it appears that Harman teaches all of the essential elements of Claim 1. However, out of an abundance of caution, Tavares and Miller are cited for their respective teachings on a “one-click” tax document preparation and the payment of a tax liability out of a tax account.
Tavares is in the same field of endeavor as Harman and the claimed invention: automatic tax preparation. The title is: System and Method for Automated Electronic Tax Preparation and Filing
The Abstract reads as follows:
“A system and method for automating the process of gathering information from taxpayers for tax practitioner-filed tax returns. The system and method automates the collection of taxpayer information from multiple sources to pre-populate a digital tax file prior to gathering information from a taxpayer. The tax information automatically collected and loaded (e.g. pre-populated) is organized in standardized digital tax files for every taxpayer, per tax year. The standardized digital tax file is automatically generated and the standardized format created enables the automation of tax preparation and filing workflows.” (Emphasis Added)
Tavares teaches essentially a “one click” process in that only one click or selection is necessary for the system to prepare and present a tax document. (See at least 0046). That is, no intervening clicks or options are necessary.
Therefore, it would have been obvious to one of ordinary skill in the relevant art at the time of filing the claimed invention to have modified the HR tax preparation and filing system of Harman to add the “no intervening screens” teachings of Tavares. The motivation to do so comes from Harman. As quoted above, Harman teaches the automatic preparation of a tax return using employee data. It would greatly enhance the efficiency and accuracy of the system of Harman to use the no intervening screens teachings of Tavares.
Like Harman and Taveres, Miller is in the same field of endeavor as those references and the claimed invention: automatic tax preparation. Furthermore, Miller teaches the automatic payment of the user’s tax liability from a tax savings account, as follows:
“As an alternative to using the taxpayer's bank as a financial institution, the electronic intermediary can authorize any financial institution, which is able to connect electronically to the taxing authority, to debit the taxpayer's account with the financial institution and to transmit funds to the taxing authority for the amount owed by the taxpayer. Hence, in step 17, the electronic intermediary electronically authorizes the taxpayer's financial institution to pay the taxing authority the taxes owed from funds in the taxpayer's account.”
This process is generally illustrated in Figs. 1 and 2 as follows:
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Therefore, it would have been obvious to one of ordinary skill in the relevant art at the time of filing the claimed invention to have modified the combined system of Harman in view of Tavares to add the tax payment from a tax-designated account teachings of Miller. The motivation to do so comes from Harman. As quoted above, Harman teaches the filing and payment of the tax liability. It would greatly enhance the efficiency and accuracy of the system of Harman in view of Tavares to use the specific account teachings of Miller.
With regard to Claims 2 - 10, Harman in view of Tavares in view of Miller teaches:
2. The computer-implemented method of claim 1, wherein the service provider manages one or more financial accounts of the user. (See at least Harman: 0001 and 0004.)
3. The computer-implemented method of claim 2, further comprising: responsive to determining the tax liability, facilitating, by the one or more computing devices of the service provider, a transfer of funds from a first financial account of the one or more financial accounts to a second financial account of the one or more financial accounts, wherein at least one of the first financial account or the second financial account of the user is a tax savings account. (See at least Miller at the sections quoted above.)
4. The computer-implemented method of claim 1, further comprising: receiving, by the one or more computing devices of the service provider and from the mobile device, a request for a projected tax consequence of a potential transaction, wherein causing presentation of the first screen is responsive to receiving the request for the projected tax consequence. (See at least Harman: 0005 – 00014, wherein the “implications” referenced in Harman are considered to constitute the recited term “consequence,” as in the tax consequences of the transactions mentioned in these paragraphs of Harman.)
5. The computer-implemented method of claim 4, wherein the user data further comprises transaction records associated with digital assets, wherein the transaction records are sourced from one or more of a blockchain network, a smart contract execution, or a third-party financial platform, the computer-implemented method further comprising: determining, based at least in part on the transaction records, the projected tax consequence. (See at least Harman: Fig. 1 (reproduced below) and 0024 wherein the “benefit providers” are considered to constitute the recited term “third party financial platform.” As to currencies, see Tavares: 0044. A person of ordinary skill in the art would understand that currency could include digital currency vs. fiat currency.)
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6. The computer-implemented method of claim 5, wherein the digital assets include one or more of cryptocurrencies, decentralized finance (DeFi) transactions, or non-fungible tokens (NFTs). (See at least Tavares: 0044.)
7. The computer-implemented method of claim 4, further comprising: receiving, by the one or more computing devices of the service provider, a request to perform the potential transaction; and facilitating, by the one or more computing devices of the service provider, performance of the potential transaction. (See at least Harman: 0005 – 0014)
8. The computer-implemented method of claim 4, wherein the potential transaction comprises a securities transaction. (See at least Harman: 0017 pertaining to an employee stock purchase plan.)
9. The computer-implemented method of claim 4, wherein the potential transaction comprises a cryptocurrency transaction. (See at least Tavares: 0044, wherein a person of ordinary skill in the art would understand that all forms of currency are taught including digital currency.)
10. The computer-implemented method of claim 4, wherein the potential transaction comprises one or more of a payroll deposit, a charitable donation, a childcare transaction, a healthcare transaction, a mortgage payment, or a property tax expense. (See at least Harman: 0005 – 0014.)
With regard to Claim 11, this claim is essentially identical to Claims 4 or 5 and is obvious for the same reasons as set forth above with respect to that claim.
With regard to Claim 12, this claim is essentially identical to Claim 4 or 5 and is obvious for the same reasons as set forth above with respect to that claim.
With regard to Claim 13, this claim is essentially identical to Claim 10 and is obvious for the same reasons as set forth above with respect to that claim. See also Miller: pertaining to obtaining loans based on anticipated refund payments.)
With regard to Claim 14, this claim is essentially identical to Claim 1 and is obvious for the same reasons as set forth above with respect to that claim.
With regard to Claim 15, this claim is essentially identical to Claim 1 and is obvious for the same reasons as set forth above with respect to that claim.
With regard to Claim 16, this claim is essentially identical to Claim 4 or 7 and is obvious for the same reasons as set forth above with respect to that claim.
With regard to Claim 17, this claim is essentially identical to Claim 12 and is obvious for the same reasons as set forth above with respect to that claim.
With regard to Claim 18, this claim is essentially identical to Claim 14 and is obvious for the same reasons as set forth above with respect to that claim.
With regard to Claim 19, this claim is essentially identical to Claim 1 and is obvious for the same reasons as set forth above with respect to that claim.
With regard to Claim 20, this claim is essentially identical to Claim 8 or 9 or 10 and is obvious for the same reasons as set forth above with respect to that claim.
Conclusion
5. Applicant should carefully consider the following in connection with this Office Action:
A. Search and Prior Art
The search conducted in connection with this Office Action, as well as any previous Actions, encompassed the inventive concepts as defined in the Applicant’s specification. That is, the search(es) included concepts and features which are defined by the pending claims but also pertinent to significant although unclaimed subject matter. Accordingly, such search(es) were directed to the defined invention as well as the general state of the art, including references which are in the same field of endeavor as the present application as well as related fields (e.g. tax preparation systems). Indeed, there is a plethora of prior art in these fields.
Therefore, in addition to prior art references cited and applied in connection with this and any previous Office Actions, the following prior art is also made of record but not relied upon in the current rejection:
U.S. Patent Publication No. 2025/0148545 to Blaikie, III et al. This reference relates to the concept of automatic tax template preparation.
U.S. Patent Publication No. 2012/0053965 to Hellman et al. This reference relates to the concept of one-click tax preparation.
U.S. Patent No. 8,099,329 to Paulsen et al. This reference relates to the concept of simulating the tax impact of certain transactions
B. Responding to this Office Action
In view of the foregoing explanation of the scope of searches conducted in connection with the examination of this application, in preparing any response to this Action, Applicant is encouraged to carefully review the entire disclosures of the above-cited, unapplied references, as well as any previously cited references. It is likely that one or more such references disclose or suggest features which Applicant may seek to claim. Moreover, for the same reasons, Applicant is encouraged to review the entire disclosures of the references applied in the foregoing rejections and not just the sections mentioned.
C. Interviews and Compact Prosecution
The Office strongly encourages interviews as an important aspect of compact prosecution. Statistics and studies have shown that prosecution can be greatly advanced by way of interviews. Indeed, in many instances, during the course of one or more interviews, the Examiner and Applicant may reach an agreement on eligible and allowable subject matter that is supported by the specification.
Interviews are especially welcomed by this examiner at any stage of the prosecution process. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool (e.g. TEAMS).
To facilitate the scheduling of an interview, the Examiner requests the use of the AIR form as follows:
USPTO Automated Interview Request http://www.uspto.gov/interviewpractice.
Other forms of interview requests filed in this application may result in a delay in scheduling the interview because of the time required to appear on the Examiner's docket. Thus, the use of the AIR form is strongly encouraged.
D. Communicating with the Office
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM BUNKER whose telephone number is (571)272-0017. The examiner can normally be reached on M - F 8:30AM - 5:30PM, Pacific.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas, can be reached at 571-270-1836. Information regarding the status of an application, whether published or unpublished, may be obtained from the “Patent Center” system. For more information about the Patent Center system, https://patentcenter.uspto.gov/
/William (Bill) Bunker/
U.S. Patent Examiner
AU 3691
william.bunker@uspto.gov
(571) 272-0017
June 5, 2026
/ABHISHEK VYAS/Supervisory Patent Examiner, Art Unit 3691
Prosecution Insights