Ex Parte 6697787 et al - Page 7



                 Appeal 2007-0518                                                                                        
                 Application 90/006,969                                                                                  
                        onto said electronic tax return (as recited in claims 31-33, 39 and 40)                          
                        (Final Rejection 8 and Answer 5);                                                                
                                2) the automatic and electronic collection of tax data (as recited                       
                        in claims 34-38)                                                                                 
                                3) the tax data collected is reported on an internal revenue                             
                        service, state, local or foreign tax form as recited in claims 33 and 36.                        
                        8.  With respect to the last item, the Examiner poses several                                    
                 hypothetical questions regarding the limitation such as 1) do the claims                                
                 require that the tax data expressly be reported and, if so, to whom? 2)  if the                         
                 scope of the claims necessitates an active reporting of the tax data on one of                          
                 the recited forms, what is the extent of the data reported? 3) does the                                 
                 invention report the actual image data or an OCR version of the contents of                             
                 an entire IRS tax form?  (Final Rejection 6-9 and Answer 3-6).                                          
                        9.  The Examiner also argues that since the Specification describes                              
                 that the invention may be implemented using existing software, such as                                  
                 TurboTax®, that the demarcation between one off-the-shelf software                                      
                 program being integrated into another piece of software is not made clear by                            
                 the Specification (Final Rejection 7-8 and Answer 8 and 27).                                            
                        10.   Simplification’s Specification states:                                                     
                                Hence, with the electronic collection of tax data as in step 12,                         
                        the invention eliminates the current requirement that a taxpayer                                 
                        manually collect the tax data, eliminates the current requirement that a                         
                        taxpayer manually enter such tax data onto a tax return or into a                                
                        computer, and eliminates the need for all, or virtually all, intermediate                        
                        hard copies of tax data, thereby saving paper, time, and cost.                                   

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