Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
This action is in response to the Request for Continued Examination (RCE) filed 7/6/2026. Applicant has amended claims 12, 32 and 43 and cancelled claims 1-11, 16-25 and 36. Accordingly, claims 12-15, 26-35 and 37-43 are pending for examination.
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 12-15, 26-35 and 37-43 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.
Claim 12 recites the abstract idea of “ranking investment portfolios as function of aggregate scores, modifying allocation of asset and revising listing of the ranked investment portfolios”, which is grouped under “Certain Methods of Organizing Human Activity” such as “fundamental economic principles or practices”- wealth management/asset strategy” and “mathematical concepts”- model). (MPEP 2016.04(a)).
Specifically, claim 12 recites “… receiving … a plurality of investment portfolios for a plurality of clients, each investment portfolio including a plurality of types of assets and at least one investment objective for the investment portfolio, wherein the investment objective identifies a goal percentage for each asset type in the investment portfolio”, “… for each investment portfolio, selecting for each asset at least one evaluation category, wherein teach of the evaluation category identifies criteria to be used to evaluate each asset”, “and wherein at least two of the evaluation categories are overlapping such that at least one asset is evaluated under multiple evaluation categories to provide a multi-dimensional analysis of the investment portfolio”, “… for each investment portfolio, performing operations that establish a plurality of thresholds for each evaluation category”, “… for each investment portfolio, determining a market value for each of the assets in the investment portfolio”, “… for each investment portfolio determining an amount of deviation of each evaluation category from the established thresholds”, “… for each investment portfolio, performing operations that classify each evaluation category as a function of the determined amount of deviation of the evaluation category from the established thresholds”, “… for each investment portfolio, performing operations that assign a score for each of the classifications of the evaluation categories for the respective investment portfolio”, “… for each investment portfolio, determining an aggregate score using the assigned scores for all of the classifications of the evaluation categories for the respective investment portfolio”, “… performing operations that rank the plurality of investment portfolios as a function of the aggregate scores of the plurality of investment portfolios”, “displaying a listing of the ranked investment portfolios … wherein respective names of each of the ranked investment portfolios are displayed in a rank order in a first portion of the … and wherein a plurality of symbols indicative of the classification of each evaluation category for each of the ranked investment portfolios are displayed in a second portion of the ….”, “… receiving a selection of a displayed ranked investment portfolio”, “… receiving a selection of a displayed ranked investment portfolio”, “… for the selected displayed ranked investment portfolio, identifying at least one transaction to perform that changes the classification of at least one evaluation category by modifying an allocation of a respective asset in at least one respective investment portfolio, and displaying said identified at least one transaction on the ….”, “receiving a selected transaction from the at least one identified transaction to perform”, “executing the selected transaction, wherein executing the selected transaction comprises effecting a purchase or sale of at least one financial instrument in the at least one respective investment portfolio, “… receiving… the plurality of investment portfolios including the at least one respective investment portfolio, the at least one respective investment portfolio including a revised allocation of the respective asset”, “…performing operations that rank the plurality of investment portfolios including that at least one respective investment portfolio, as a function of the aggregate scores of the plurality of investment portfolios”, “displaying a revised listing of the ranked investment portfolios … the revised listing unequal to the listing of the ranked investment portfolios”.
Accordingly, claim 12 recites an abstract idea.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP 2106.04II), the additional elements of claim 12 such as “ electronically”, “at a computer processor”, “by the computer processor”, “on a display device” comprising a graphical user interface”, “ at the computer processor” represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular technological environment or field of use. With respect to “colored-coded...each color corresponding to a different classification level”, the recited color coding does not improve the functioning of the computer or graphical user interface itself, nor does it improve another technology, but instead uses the graphical user interface as a tool to present the results of the abstract idea. Therefore, the limitations do not integrate the abstract idea into a practical application as they are no more than “apply it” (MPEP 2106.05(f)(1)).
When analyzed under step 2B (MPEP 2106.04II), the additional elements, individually and as an ordered combination, do not more than represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use, they do not provide an improvement to computer functionality, or an improvement to another technology or technical field and, therefore, do not amount to significantly more than the judicial exception itself (MPEP 2106.05(I)(A)(f)&(h)).
Hence, claim 12 is not patent eligible.
Depending claims 13-15 and 26-31 further recite “issuing an alert as a function of one of the aggregated scores of the plurality of investment portfolios (claim 13)”, “wherein the alert is based on an amount of time that a respective one of the plurality of investment portfolios exceeds a suggested guideline (claim 14)”, “wherein the alert is based on the occurrence of exceeding a threshold (claim 15), “receiving instructions…. the transaction (claim 16)”, “wherein the plurality of thresholds includes a concentration of an individual asset as compared to all asses held in the portfolio (claim 28)”, “wherein the industry sector includes at least one of communications, utilities, consumer staples, energy, health care, financial services, industrials, consumer discretionary and …. (claim 29)”, “wherein the step of performing operations that classify each evaluation category includes determining a difference between an actual concentration of an asset and suggested guideline (claim 30) and “wherein the step of performing operations that classify each evaluation category includes comparing the determined difference with the plurality of thresholds (claim 31)“ which is grouped under “Certain Methods of Organizing Human Activity” such as “fundamental economic principles or practices”- wealth management/asset strategy”. (MPEP 2016.04(a)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP 2106.04II), the additional elements of claims 13-15 and 26-31, such as “via the graphical user interface (claim 26)”, “(the industry section includes) … technology (claim 29)” represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular technological environment or field of use. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
When analyzed under step 2B (MPEP 2106.04II), the additional elements, individually and as an ordered combination, do not more than represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use, they do not provide an improvement to computer functionality, or an improvement to another technology or technical field and, therefore, do not amount to significantly more than the judicial exception itself (MPEP 2106.05(I)(A)(f)&(h)).
Hence, depending claims 13-15 and 26-31 are not patent eligible.
Claim 32 is also directed to the abstract idea of “Certain Methods of Organizing Human Activity” such as “fundamental economic principles or practices”- wealth management/asset strategy” and “mathematical concepts”- model). (MPEP 2016.04(a)).
As in the case of claim 12, claim 32 includes additional elements such as “a display device comprising a graphical user interface”, “a memory for storing computer readable code”, “a processor operatively coupled to the memory”, “on the graphical interface” and “on the display”. Each, however, does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. With respect to “colored-coded...each color corresponding to a different classification level”, the recited color coding does not improve the functioning of the computer or graphical user interface itself, nor does it improve another technology, but instead uses the graphical user interface as a tool to present the results of the abstract idea. Therefore, the limitations do not integrate the abstract idea into a practical application as they are no more than “apply it” (MPEP 2106.05(f)(1)).
When analyzed under step 2B (MPEP 2106.04II), because the additional elements do no more than represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use, they do not provide an improvement to computer functionality, or an improvement to another technology or technical field and, therefore, do not amount to significantly more than the judicial exception itself (MPEP 2106.05(I)(A)(f)&(h)).
Hence, claim 32 is not patent eligible.
Depending claims 33-35 and 37-42 further recite “issue an alert as a function of one of the aggregated scores of the plurality of investment portfolios (claim 33)”, “wherein the alert is based on an amount of time that a respective one of the plurality of investment portfolios exceeds a suggested guideline (claim 34)”, “wherein the alert is based on the occurrence of exceeding a threshold (claim 35), “receiving instructions…. the transaction (claim 37)”, “wherein the plurality of thresholds includes a concentration of an individual asset as compared to all asses held in the portfolio (claim 28)”, “wherein the industry sector includes at least one of communications, utilities, consumer staples, energy, health care, financial services, industrials, consumer discretionary and …. (claim 29)”, “wherein the step of performing operations that classify each evaluation category includes determining a difference between an actual concentration of an asset and suggested guideline (claim 30) and “wherein the step of performing operations that classify each evaluation category includes comparing the determined difference with the plurality of thresholds (claim 31)“ which is grouped under “Certain Methods of Organizing Human Activity” such as “fundamental economic principles or practices”- wealth management/asset strategy”. (MPEP 2016.04(a)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP 2106.04II), the additional elements of claims 33-35 and 37-42, such as “processor is configured to… (claims 33, 41 and 42), “graphical user interface is configured to… (claim 37)”, “(the industry section includes) … technology (claim 40)” represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular technological environment or field of use. With respect to “to execute… (the selected transaction)” (claim 37), the claims lack detail regarding what “executing” comprise (MPEP 2106.05(f)(1)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
When analyzed under step 2B (MPEP 2106.04II), because the additional elements do no more than represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use, they do not provide an improvement to computer functionality, or an improvement to another technology or technical field and, therefore, do not amount to significantly more than the judicial exception itself (MPEP 2106.05(I)(A)(f)&(h)).
Hence, depending claims 33-35 and 37-42 are not patent eligible.
Claim 43 is also directed to the abstract idea of “Certain Methods of Organizing Human Activity” such as “fundamental economic principles or practices”- wealth management/asset strategy” and “mathematical concepts”- model). (MPEP 2016.04(a)).
As in the case of claim 12, claim 43 includes additional elements such as “a computer-useable non-transitory medium having computer readable instructions, that, when executed by one or more processors, cause the one or more processors to…”, “on a display device comprising a graphical user interface”, “of the graphical user interface” and “on the display”. Each, however, does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. With respect to “colored-coded...each color corresponding to a different classification level”, the recited color coding does not improve the functioning of the computer or graphical user interface itself, nor does it improve another technology, but instead uses the graphical user interface as a tool to present the results of the abstract idea. Therefore, the limitations do not integrate the abstract idea into a practical application as they are no more than “apply it” (MPEP 2106.05(f)(1)).
When analyzed under step 2B (MPEP 2106.04II), the additional elements, individually and as an ordered combination, do not more than represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use, they do not provide an improvement to computer functionality, or an improvement to another technology or technical field and, therefore, do not amount to significantly more than the judicial exception itself (MPEP 2106.05(I)(A)(f)&(h)).
Hence, claim 43 is not patent eligible.
Claims 12-15, 26-35 and 37-43 have been searched and reviewed. No prior art has been found that discloses, either expressly or inherently, all of the limitations of the claimed invention. Even though Muralidhar (US 2003/0093352 A1) discloses receiving investment portfolios for clients, identifying percentage of asset type, selecting evaluation category and establishing thresholds for each evaluation category and determine market values, see at least paragraphs 0043, 0002, 0052, 0021, 0022, 0045 and 0032, the rest of limitations recited in claims 12, 32 and 43, considered as a whole including all limitations in the independent claims, is not taught by the prior arts found in examiner’s search. Therefore, no rejection under 102/103 is made.
Related But Not Relied Upon
Relevant art cited but not applied: Wallman (US 2004/0039675 A1), directed to color-coding used in connection with presentation of data in portfolio.
Response to Arguments
Applicant's arguments filed 7/6/2026 have been fully considered but they are not persuasive.
Applicant argued that the claims are statutory under 35. U.S.C. 101 because 1) the claims are not directed to abstract idea because the process cannot be performed mentally or with pen and paper 2) the claims do not recite principles or attempt to monopolize 3) the amended claims integrate the abstract into practical application because “multi-dimensional” approach results in technological improvement, the symbols are “color-coded” and “executing” now specifies effecting of a purchase or sale of a financial instrument 4) the claims improve the functioning of the computing systems tasked with portfolio evaluation 5) the lack of prior art results in insufficient evidence that the claims are ineligible. The examiner disagrees. The claims recite a judicial exception because at least certain limitations recite evaluations, mathematical calculations and/or fundamental economic activity. More specifically, the claims are direct to the abstract idea of “ranking investment portfolios as function of aggregate scores, modifying allocation of asset and revising listing of the ranked investment portfolios”, which is grouped under “Certain Methods of Organizing Human Activity” such as “fundamental economic principles or practices”- wealth management/asset strategy” and “mathematical concepts”- model). (MPEP 2016.04(a)). The fact that the claims additionally require operations to be performed by a computer does not remove the recited abstract idea. In response to applicant’s arguments that the claims do no attempt to monopolize, it is noted that although preemption is an underlying concern of the judicial exceptions, the absence of complete preemption does not establish patent eligibility. In response to applicant’s argument that “multi-dimensional” approach results in technological improvement, it is noted that although the claimed use of overlapping evaluation categories may provide additional or more comprehensive information regarding an investment portfolio, Applicant’s has not established that this approach improves the functioning of computer itself or any other technology or technical field. Rather, the alleged improvement concerns the content, scope and quality of the investment analysis performed using the computer-i.e. evaluating an asset according to multiple investment criteria. Auch an improvement to an abstract financial evaluation does not become a technological improvement merely because the evaluation is performed by a computer. In response to applicant’s argument that the symbols are “color-coded”, it is noted that the recited color coding does not improve the functioning of the computer or graphical user interface itself, nor does it improve another technology, but instead uses the graphical user interface as a tool to present the results of the abstract idea. In response to applicant’s argument that “executing” now specifies effecting of a purchase or sale of a financial instrument, it is noted that the amend limitation further specifies the financial activity to which the claimed portfolio evaluation and recommendation are applied. Effecting a purchase or sale of a financial instrument constitutes an economic/commercial transaction and does not, without more, represent an improvement to computer functionality or another technology or technical field. In response to applicant’s argument that the claimed portfolio evaluation improves the functioning of the computer system, it is noted that the limitations concern the financial information being analyzed and the analytical rules applied to that information, rather than an improvement in the manner in which the computer stores, retrieves, processes, transmits or otherwise technically handles data. Accordingly, any improvement resulting from the claimed portfolio evaluation is an improvement to the underlying investment-analysis methodology, rather than an improvement to computer functionality or another technology or technical field. In response to applicant’s argument that the multi-dimensional overlapping evaluation category is not a well-understood, routine, or conventional activity, it is noted that the overlapping-category evaluation is part of the identified abstract investment-evaluation methodology itself. Applicant is reminded that if an examiner had previously concluded under Step 2A that an additional element was insignificant extra-solution activity they should reevaluate such conclusion in Step B (please see at least MPEP 2106.05 (g)) and if such reevaluation indicates that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that an inventive concept is present. In this case, since the examiner has not concluded under Step 2A that any element is “insignificant extra-solution activity”, no reevaluation of whether the elements are “routine and conventional” is needed. Applicant therefore cannot establish an inventive concept merely by asserting that this particular implementation of the abstract financial analysis was unconventional. In response to applicant’s argument there is lack of prior art, it is noted that the absence of a 102/103 rejection does not establish that the claim is eligible under 35 U.S.C. 101. Therefore, applicant’s arguments are not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHIA-YI LIU whose telephone number is (571)270-1573. The examiner can normally be reached Mon-Thurs 9-8 pm.
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/CHIA-YI LIU/Primary Examiner, Art Unit 3692
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