Appeal 2007-0518
Application 90/006,969
the phrase “wherein the tax data is reported on an Internal Revenue (“IRS”),
state, local, or foreign tax form” is merely descriptive of the type of tax data
that is collected (Answer 22). Reported tax data is just data appearing on a
tax form. The claim does not require active reporting of the data as argued
by the Examiner. Our interpretation is supported by the description in the
Specification (FF 11). It also does not matter who had placed the data on an
IRS, state, local, or foreign tax form such that such data can then be
collected as “reported.” The Examiner failed to rebut Simplification’s
argument in this regard, and therefore, the rejection of the claims 33 and 36,
under 35 U.S.C. 112, ¶ 2 is also without merit.
The prior art rejections
The Examiner finally rejected: (1) independent claims 1, 10, 31, 32,
34, 35 and 37-40 as being anticipated under 35 U.S.C. § 102(b) by Beamer
and further supported by the disclosure of “It’s W-2 Time” and (2)
independent claims 15, 33 and 36 as being unpatentable under 35 U.S.C.
§ 103 over Beamer and further supported by the disclosure of “It’s W-2
Time” and based on official notice taken by the Examiner. In both the
anticipation and the obviousness rejections, the Examiner relied on Beamer
to teach collecting electronically tax data from said tax data provider.2
2 Although the Examiner took official notice as to the different types of tax
data that one could obtain from a bank, the Examiner in rejecting claims 15,
33, and 36 relies on Beamer to teach collecting tax data from a tax data
provider, e.g., a bank (FFs 28 and 29). Thus, the issue with respect to claims
15, 33 and 36 is whether Beamer describes collecting tax data from a tax
data provider.
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