Appeal 2007-0518
Application 90/006,969
Specification describes that once the tax payer provides account or
identification data to the intermediary, the intermediary then may
electronically search databases for the tax payer’s tax data (Specification
col. 4:51-56), or the electronic intermediary may electronically contact and
collect from the tax data providers the tax payer’s tax data (Specification col.
4:56-62). The Examiner has failed to clearly articulate why such
descriptions fail to convey to one of ordinary skill in the art that the inventor
had possession of automatic and electronic collection of tax data.
The Examiner also found 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 (FF 9). The Examiner’s position is not persuasive. The
Specification states that “step 13 can be implemented using a computer
program similar to the computer programs currently available in the market
place” such as TurboTax® (FF 10). The Specification makes clear that the
software may be similar to what is available in the market place, but need
not be exactly the same software.
Lastly, the Examiner determined that tax data “reported on an Internal
Revenue Service (“IRS”), state, local, or foreign tax form” as recited in
claims 33 and 36 is not supported by the Specification. The Examiner poses
several hypothetical questions regarding the limitation (FF 8). The questions
are confusing and detract from any reasoned articulated explanation of why
the Examiner finds that the inventor did not have possession of the claimed
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