DETAILED ACTION
Status of Claims
1. This office action is in response to RCE filed 10/17/2025.
2. Claims 1-3, 7, 8, 11-15 are pending.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/17/2025 has been entered.
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 1-3, 7, 8, 11-15
Claims 1-3, 7, 8, 11-15 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.
Step 1: The claims 1-3, 7 are directed to a system, 8, 11-15 are directed to a method – each of which is one of the statutory categories of invention.
Step 2A: A claim is eligible at revised Step 2A unless it recites a judicial exception and the exception is not integrated into a practical application of the application.
Prong 1: Prong One of Step 2A evaluates whether the claim recites a judicial exception (an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon).
Groupings of Abstract Ideas:
I. MATHEMATICAL CONCEPTS
A. Mathematical Relationships
B. Mathematical Formulas or Equations
C. Mathematical Calculations
II. CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY
A. Fundamental Economic Practices or Principles (including hedging, insurance, mitigating risk)
B. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)
C. Managing Personal Behavior or Relationships or Interactions between People (including social activities, teaching, and following rules or instructions)
III. MENTAL PROCESSES.
Concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
See MPEP 2106.04 (a) (2) Abstract Idea Groupings [R-10.2019]
Independent claim 1 recites – collecting from a questionnaire user information including the user’s risk tolerance; providing feedback to user to follow a recommended investment strategy; prompting the user to select a virtual trustee from a list of virtual trustees that correspond with the user’s risk profile including interaction between user and one or more trustee – that constitutes Fundamental Economic Practices and/or Commercial/Legal Interactions and/or Managing Interactions between People. Independent claims 8 and 11 recite substantially similar limitations. Hence, independent claims 1, 8 and 11 fall under the abstract idea grouping of Certain Methods of Organizing Human Activity.
The dependent claims further limit the abstract idea to – recommending an investment strategy, collecting and storing user data, and queries between user and trustees upon occurrence of market events, determining personality traits, experiences and tendencies from user input – that also constitute Certain Methods of Organizing Human Activity.
Hence under Prong One of Step 2A, the claims recite a judicial exception.
Prong 2: Prong Two of Step 2A evaluates whether the claim recites additional elements that integrate the judicial exception into a practical application of the exception.
Limitations that are indicative of integration into a practical application include:
Improvements to the functioning of a computer or to any other technology or technical field – see MPEP 2106.05(a)
Applying the judicial exception with, or by use of, a particular machine – see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing – see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception – see MPEP 2106.05(e)
Limitations that are not indicative of integration into a practical application include:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea – see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception – see MPEP 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Additional elements recited by the claims, beyond the abstract idea, include: an investment management system comprising a computer connected to a general user interface, computer readable storage device, and central processing unit; memory; processor; authentication screen; artificial intelligence and machine learning. As per, para [0021], the user’s computing device is a terminal such as a PC, laptop, tablet or smart phone. Examiner thus finds that the additional elements have been recited at a high level of generality such that the claim limitations amount to no more than mere instructions to apply the exception using generic components (see MPEP 2106.05(f)) or data gathering activities (see MPEP 2106.05(g)).
The combination of additional elements does not purport to improve the functioning of a computer or effect an improvement in any other technology or technical field. Instead, the additional elements do no more than “use the computer as a tool” and/or “link the use of the judicial exception to a particular technological environment or field of use.” The focus of the claims is not on improvement in computers, but on certain independently abstract ideas – collecting user information including the user’s risk tolerance; providing feedback to user to follow a recommended investment strategy; prompting the user to select a virtual trustee from a list of virtual trustees that correspond with the user’s risk profile including interaction between user and one or more trustee – that merely use computers as tools. Steps that do no more than spell out what it means to “apply it on a computer” cannot confer patent eligibility.
Therefore, the claim(s) as a whole, looking at the additional elements individually and in combination, do not integrate the judicial exception into a practical application.
For the above reasons, claims are ineligible under Step 2A.
Step 2B:
In Step 2B, the evaluation consists of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception.
As discussed in Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using generic computer components, which is insufficient to provide an inventive concept.
When considered individually or as an ordered combination, the additional elements fail to transform the abstract idea of – collecting user information including the user’s risk tolerance; providing feedback to user to follow a recommended investment strategy; prompting the user to select a virtual trustee from a list of virtual trustees that correspond with the user’s risk profile including interaction between user and one or more trustee – into significantly more.
See MPEP 2106.05(f) Mere Instructions To Apply An Exception [R-10.2019].
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.
Hence, the claims are ineligible under Step 2B.
Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 103
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, 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 1-3, 7, 8, 11, 14, 15
Claims 1-3, 7, 8, 11, 14, 15 are rejected under 35 U.S.C. 103 as being unpatentable over Macdonald et al. (US 2016/0117771 A1) in view of Robb (US 2013/0151301 A1) further in view of Mackrell (US8423444B1).
Claim 1:
An investment management system, comprising:
a single general user interface; and
a computer connected to the single general user interface and having:
a computer readable storage device connected to a database including user data associated with a user financial profile and performance of a user account; and
a central processing unit connected to the single general user interface and the computer readable storage device, via the computer and running a plurality of core modules, the database including:
at least some of the user data stored in a computer readable medium and selected from the group consisting of personality traits, financial experience, financial goals, and combinations thereof;
(See Macdonald: Para [0073] (“In some embodiments, the profile data aggregation module 110 stores the personal profile in, e.g., database 108.”)
a questionnaire to collect and store user information and calculate a user's risk tolerance and ability to withstand risk, the questionnaire transmitting the user's current age, and a number of years the user wishes to follow a financial plan to meet the user's financial goal;
(See Macdonald: Para [0049] (“FIG. 15 is an exemplary questionnaire to obtain household profile data from a user.”)
a plan summary module that provides current feedback to the user on steps to be taken by the user to follow a recommended investment strategy;
(See Macdonald: Para [0083] (“The aggregate effect analyzer module 406 can combine the above factors to determine that the user's lower-risk investment strategy may not provide enough asset growth over time to fulfill the user's desire for sizable withdrawals. Therefore, the aggregate effect analyzer module 406 can identify this conflict and adjust the data elements to account for the conflict (e.g., by slightly reducing the size of the user's withdrawals for specific time periods during retirement).”)
a list of virtual trustees accessible by the computer; and
(See Robb: Para [0144] (“Before a client and one his advisors can collaborate on a project, the advisor must be added to the client's “advisors list.” The client's advisors list contains the list of advisors with whom the client may collaborate. A client's advisors list is stored in client database 130. There are two ways for an advisor to be included in a client's advisors list.”)
a board of one or more virtual trustees created by the user from the list of virtual trustees and that correspond with a determined user profile from the user data, and programmatic instructions for collecting information about the user from one or more third party databases, and programmatic instructions to identify at least one virtual trustee, request wherein the system prompts the user to select a virtual trustee, and programmatic instructions to create interaction between a user and one or more of the virtual trustees, and
wherein the interaction between a user and one or more of the trustees includes periodic queries to the user initiated by the investment management system.
(See Robb: Para [0152] (“A client manually adds an advisor to his advisors list by accessing advisors sub-module 902 (that is, selecting my advisors button 1108 on client interface 1100). After selecting the my advisors button 1108, an advisors screen 1400 (see FIG. 14) is displayed in display area 1140. Advisors screen 1400 enables a client to view a list of the client's advisors (i.e., the client's advisors list), to change access level information for an advisor, to add/remove an advisor from the client's advisors list and perform other operations.”)
Therefore, it would have been obvious to a person having ordinary skills in the art before the effective filing date to modify the above noted disclosure of Macdonald as it relates to customized asset allocation recommendation to include the above noted disclosure of Robb as it relates to client advisor collaboration. The motivation for combining the references would have been to provide collaborative document management tool for facilitate efficient collaboration between client and adviser on asset management strategies.
The combination of Macdonald + Robb describes does not specifically disclose:
wherein at least some user information is input by the user via a user display as part of the general user interface, and risk tolerance is assessed by adjusting within the user display, the placement of a marker within an image having a first axis representing a gradient of risk tolerance having opposing ends that are indicative of low risk tolerance and high risk tolerance, and a second axis oriented orthogonal to the first axis (e.g., along a Y axis) representing a gradient for ability to withstand risk, again with ends that are high and low ability to withstand risk,
However, Mackrell discloses the above limitation
(See Mackrell: Claim 1
(“a first axis describing a desired level of involvement of the user in investment decisions, such that a first end of the first axis corresponds to a high interest regarding the desired level of involvement and a second end of the first axis corresponds to a low interest regarding the desired level of involvement;
a second axis describing a risk tolerance of the user, such that a first end of the second axis corresponds to a high tolerance for financial risk regarding the risk tolerance of the user and a second end of the second axis corresponds to a low tolerance for financial risk regarding the risk tolerance of the user;
a first icon representing a first position on the first and second axes that, when activated by the user, causes the interface to display a description of a first example investor having investment characteristics corresponding to the first position on the first and second axes, and wherein the description of the first example investor comprises information regarding a desired level of involvement in investment decisions for the first example investor and risk tolerance for the first example investor;
a second icon representing a second position on the first and second axes, that, when activated by the user, causes the interface to display a description of a second example investor having investment characteristics corresponding to the second position on the first and second axes, and wherein the description of the second example investor comprises information regarding a desired level of involvement in investment decisions for the second example investor and risk tolerance for the second example investor;”)
Therefore, it would have been obvious to a person having ordinary skills in the art before the effective filing date of the invention to modify the combination of Macdonald + Robb to include the above noted disclosure of Mackrell as it relates to user risk tolerance. The motivation for combining the references would have been to make asset allocation recommendation based on detailed breakdown of client retirement expenses.
Claim 2:
wherein the plurality of core modules further includes a recommended financial investment strategy and an amount for the user to invest for each year to meet the user's financial goal calculated by the recommended financial investment strategy.
(See Macdonald: Para [0012])
Claim 3:
wherein the plurality of core modules includes a landing screen module to provide the instructions and collects and stores user data.
(See Macdonald: Para [0014])
Claim 7:
wherein the interaction between a user and one or more of the trustees includes queries to the user initiated investment management system upon the occurrence of external events affecting financial markets.
(See Robb: Para [0082])
Claim 8:
A method for developing behavioral financial wellness using an investment management system having one or more virtual financial advisors wherein the investment management system outputs feedback to a user to reinforce good behavioral financial wellness, comprising the steps of:
entering user data in an authentication screen;
(See Robb: Para [0123])
entering user profile data;
(See Macdonald: Para [0012])
creating a risk profile by a questionnaire to collect risk-related data from a user;
(See Macdonald: Para [0080], [0081])
wherein at least some user information is input by the user via a user display as part of the general user interface, and risk tolerance is assessed by adjusting within the user display, the placement of a marker within an image having a first axis representing a gradient of risk tolerance having opposing ends that are indicative of low risk tolerance and high risk tolerance, and a second axis oriented orthogonal to the first axis (e.g., along a Y axis) representing a gradient for ability to withstand risk, again with ends that are high and low ability to withstand risk,
(See Mackrell: Claim 1
(“a first axis describing a desired level of involvement of the user in investment decisions, such that a first end of the first axis corresponds to a high interest regarding the desired level of involvement and a second end of the first axis corresponds to a low interest regarding the desired level of involvement;
a second axis describing a risk tolerance of the user, such that a first end of the second axis corresponds to a high tolerance for financial risk regarding the risk tolerance of the user and a second end of the second axis corresponds to a low tolerance for financial risk regarding the risk tolerance of the user;
a first icon representing a first position on the first and second axes that, when activated by the user, causes the interface to display a description of a first example investor having investment characteristics corresponding to the first position on the first and second axes, and wherein the description of the first example investor comprises information regarding a desired level of involvement in investment decisions for the first example investor and risk tolerance for the first example investor;
a second icon representing a second position on the first and second axes, that, when activated by the user, causes the interface to display a description of a second example investor having investment characteristics corresponding to the second position on the first and second axes, and wherein the description of the second example investor comprises information regarding a desired level of involvement in investment decisions for the second example investor and risk tolerance for the second example investor;”)
transmitting user profile data to both an investment system and to a virtual advisor selection system;
(See Macdonald: Para [0074])
selecting one or more virtual advisors using the profile data and the risk profile; and
(See Robb: Para [0152])
initiating output from the virtual advisors to the user.
(See Robb: Para [0241])
wherein the step of initiating output is carried out either periodically at one or both of a specified time interval or due to an event determined by the investment management system as one affecting financial markets.
(See Macdonald: Para [0111])
Claim 11:
A computer system for developing behavioral financial wellness using an investment management system having one or more virtual financial advisors that outputs feedback to a user to reinforce good behavioral financial wellness comprising:
a memory containing data describing several virtual financial advisors chosen by processing data from a user profile created from data input by a user, the memory including a set of operations and commands that create a questionnaire displayed on the user interface into which a user provides the user data as part of a user assessment at least some of the user data stored in a computer readable medium and selected from the group consisting of personality traits, financial experience, financial goals, and combinations thereof information about a user's risk tolerance and ability to withstand risk, … along with the user's current age, and a number of years the user wishes to follow a financial plan to meet the user's financial goal;
(See Macdonald: Para [0027] – [0029])
wherein at least some user information is input by the user via a user display as part of the general user interface, and risk tolerance is assessed by adjusting within the user display, the placement of a marker within an image having a first axis representing a gradient of risk tolerance having opposing ends that are indicative of low risk tolerance and high risk tolerance, and a second axis oriented orthogonal to the first axis (e.g., along a Y axis) representing a gradient for ability to withstand risk, again with ends that are high and low ability to withstand risk,
(See Mackrell: Claim 1
(“a first axis describing a desired level of involvement of the user in investment decisions, such that a first end of the first axis corresponds to a high interest regarding the desired level of involvement and a second end of the first axis corresponds to a low interest regarding the desired level of involvement;
a second axis describing a risk tolerance of the user, such that a first end of the second axis corresponds to a high tolerance for financial risk regarding the risk tolerance of the user and a second end of the second axis corresponds to a low tolerance for financial risk regarding the risk tolerance of the user;
a first icon representing a first position on the first and second axes that, when activated by the user, causes the interface to display a description of a first example investor having investment characteristics corresponding to the first position on the first and second axes, and wherein the description of the first example investor comprises information regarding a desired level of involvement in investment decisions for the first example investor and risk tolerance for the first example investor;
a second icon representing a second position on the first and second axes, that, when activated by the user, causes the interface to display a description of a second example investor having investment characteristics corresponding to the second position on the first and second axes, and wherein the description of the second example investor comprises information regarding a desired level of involvement in investment decisions for the second example investor and risk tolerance for the second example investor;”)
a processor coupled to the memory programmed with executable programmatic instructions, the instructions including an interface for both collecting information about the user and about financial accounts from one or more third party databases, and programmatic instructions to prompt interaction between a user and one or more of the virtual trustees either periodically at a specified time interval or due to an event determined by the investment management system as one affecting financial markets.
(See Macdonald: Para [0090] – [0092])
Claim 14:
wherein the questionnaire provides one or more questionnaire screens, games, or interaction with the user for user input, whereby user input is analyzed, and the profile determination module determines personality traits, experience and tendencies based on the user input.
(See Macdonald: Para [0079], [0080], [0083], [0110])
Claim 15 is similar to claim 14 and hence rejected on similar grounds.
Claims 12, 13
Claims 12, 13 are rejected under 35 U.S.C. 103 as being unpatentable over Macdonald et al. (US 2016/0117771 A1) in view of Robb (US 2013/0151301 A1) further in view of Mackrell (US8423444B1) further in view of Cummings (US 2022/0383417 A1).
Claim 12:
The combination of Macdonald + Robb describes but does not specifically disclose:
wherein the virtual trustees are a behavioral overlay on top of a financial planning program, the overlay using both artificial intelligence (AI) and machine learning to customize the interaction between the virtual trustee and the user.
However, Cummings teaches the above limitation (See Cummings: Para [0049], [0055]).
Therefore, it would have been obvious to a person having ordinary skills in the art before the effective filing date of the invention to modify the combination of Macdonald + Robb to include the above noted disclosure of Cummings as it relates to obtaining context specific financial advice. The motivation for combining the references would have been to record asset allocation recommendations on blockchain.
Claim 13 is similar to claim 12 and hence rejected on similar grounds.
Response to Arguments
Applicant's arguments filed 10/17/2025 have been fully considered but they are not persuasive.
101
Applicant argues that claims 1, 8 and 15 do not recite a judicial exception because it includes the element of “instructions to identify at least one virtual trustee” which is not an abstract idea; like McRO and Example 39 the claims cannot be performed in the mind and does not recite method of organizing human activity; the combination of data inputs, data processing and specific requirements to create a virtual trustee that interacts with the user and provides periodic queries to the user result in learning sound investment practices; like Example 37, the claim as a whole integrate the abstract idea into a practical application.
Examiner respectfully disagrees.
Examiner notes that instructions to identify at least one virtual trustee or to create interactions between a user and one or more virtual trustees merely apply a judicial exception which is not sufficient to create a practical application. See MPEP 2106.05(f) (2) (“Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.”). Selecting a trustee and creating interaction between a user and the trustee; creating a risk profile by requiring the user to input risk date, creating a questionnaire to create a risk profile – are Certain Methods of Organizing Human Activity which is a judicial exception. The claims merely implement these abstract human activities on the computer environment by using virtual trustee as the computer equivalent of a human trustee/advisor. See Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015) (“An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer.”). Whether or not such interactions between user and virtual trustee results in sound investment practices is not a relevant consideration in patent eligibility analysis. See also Myriad, 569 U.S. at 591, 106 USPQ2d at 1979 (“Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry.”). Cf. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) (“a new abstract idea is still an abstract idea”).
Examiner also notes that the limitation “wherein at least some user information is input by the user via a user display as part of the general user interface, and risk tolerance is assessed by adjusting within the user display, the placement of a marker within an image having a first axis representing a gradient of risk tolerance having opposing ends that are indicative of low risk tolerance and high risk tolerance, and a second axis oriented orthogonal to the first axis (e.g., along a Y axis) representing a gradient for ability to withstand risk, again with ends that are high and low ability to withstand risk,” merely uses the elements of a graphical user interface including X axis, Y axis, market, image, etc., to implement an abstract idea. Examiner notes that the graphical user interface is merely a tool for presentation. The above limitation can be carried out by drawing a diagram with two axes representing risk tolerance gradient on a piece of paper (or using printed paper) and have the user draw a marker on any section of the diagram. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’). Merely using a graphical user interface to generate user questionnaire does not change abstract nature of the claim. See Trading Techs., 921 F.3d at 1093 (“The fact that this is a ‘computer-based method’ does not render the claims non-abstract. The specification indicates the claimed GUI is displayed on any computing device. As a general rule, ‘the collection, organization, and display of two sets of information on a generic display device is abstract.’”). Similarly here, the use of a graphical user interface to generate a questionnaire to collect and store user’s ability to calculate user’s risk tolerance is an abstract idea.
With respect to applicant’s attempts to analogize the present claims to McRO, Example 37 and 39, Examiner notes that all of the above examples were deemed to bring about technological improvement. For example, in McRO, the Court found that the claimed synchronization and facial expression animation were directed to an improvement in computer-related technology and not directed to an abstract idea. See 2106.04(d)(1) Evaluating Improvements in the Functioning of a Computer, or an Improvement to Any Other Technology or Technical Field in Step 2A Prong Two [R-10.2019]. In contrast, as noted before, the present claims can be carried out during in person human interaction between a user and an advisor. For the same reasons, neither of examples 37 or 39 are inapposite to the present claims. Unlike collecting user information via a questionnaire and forming an interaction between a user and a virtual advisor, determining the amount of use of an icon by tracking the amount of memory allocated to the application associated with an icon – cannot be accomplished by the human mind but only by the computer processor. Similarly, Example 39 deals with training facial images that cannot be properly carried out in the human mind unlike the pending claims that can be carried out using pencil and paper. See MPEP 2106.04(a)(1) Examples of Claims That Do Not Recite Abstract Ideas [R-10.2019]. For the above reasons, applicant’s arguments are not persuasive.
Applicant asserts that the judicial exception is integrated into a practical application.
Examiner respectfully disagrees.
As noted above, the limitations – collecting user information including the user’s risk tolerance; providing feedback to user to follow a recommended investment strategy; prompting the user to select a virtual trustee from a list of virtual trustees that correspond with the user’s risk profile including interaction between user and one or more trustee – constitute Certain Methods of Organizing Human Activity. The additional elements – the investment management system, memory and processor – merely implement the abstract idea. All of the recited steps can be carried out in person between the user and trustees using pencil and paper. A computer is not necessary to obtain information pertaining to user’s risk tolerance, finding a list of advisors corresponding to the user’s risk tolerance, and prompting the user to select a trustee. See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“Our prior cases have made clear that mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.”) (“[M]erely ‘configur[ing]’ [a] generic computer[] in order to ‘supplant and enhance’ an otherwise abstract manual process is precisely the sort of invention that the Alice Court deemed ineligible for patenting.”) Credit Acceptance Corp., 859 F .3d at 1056. The claims simply “include instructions to implement an abstract idea on a computer” and “does no more than generally link the use of a judicial exception to a particular technological environment or field of use.” The claimed limitations do not recite (i) an improvement to the functionality of a computer or other technology or technical field; (ii) a “particular machine” to apply or use the judicial exception; (iii) a particular transformation of an article to a different thing or state; or (iv) any other meaningful limitation. See MPEP 2106.05 (a)-(c), (e)-(h). Hence, the additional elements fail to integrate the abstract idea into a practical application or provide significantly more. See MPEP 2106.05(f).
Applicant argues that as in claim 4 of Example 46, the claim 1 of the present application does not recite any abstract ideas.
Examiner respectfully disagrees.
It is not clear on what basis Applicant compares the present claims to Example 46 since there exists no parallel between Example 46 and the current invention. Example 46 is directed to livestock management. In Example 46, the claimed steps are used to transform a physical process. Claim 4 of Example 46 was deemed eligible because it is a system claims comprising memory, processor, radio frequency reader, and transmitter and does not recite any abstract ideas. Applicant’s claim 1, on the other hand, consists of additional elements to implement the abstract idea of selecting personal financial traits, experience, goals; and obtaining a list of virtual trustees that correspond to user profile; provide questionnaire for user to input assessment; and request user to select a virtual trustee to create interaction between user and trustees – which falls under the abstract idea grouping of Certain Methods of Organizing Human Activity. None of the steps of the present invention can effect a physical transformation as in dispensing livestock feed; rather they can be carried out in person using pen and paper. For the above reasons, Applicant’s arguments are not persuasive
Applicant argus that the claims are eligible under claim 2 of Example 49 (“AI-Assisted Personalized Medical Treatment”) from the 2024 AI SME Update.
Examiner respectfully disagrees.
Examiner finds no parallel whatsoever between Example 49 and the present claims. Example 49 deals with administering treatment to a glaucoma patient by determining based on an AI model that the patient is at a high risk of inflammation. In contrast, the current claims deal with collecting from a questionnaire user information including the user’s risk tolerance; providing feedback to user to follow a recommended investment strategy; prompting the user to select a virtual trustee from a list of virtual trustees that correspond with the user’s risk profile including interaction between user and one or more trustee. It is difficult to see how administering a treatment to a patient is even remotely similar to an interaction between a user and one or more virtual trustees based on user’s risk tolerance. For the above reasons, applicant’s arguments are wholly unpersuasive.
103
Applicant’s arguments with respect to claim(s) 1-3, 7, 8, 11-15 have been considered but are moot in view of the new ground of rejection.
Previously Addressed
Applicant argues that the motivation set forth in the Office Action-collaboration on strategies-does not appear feasible or desirable since Macdonald is based on the user themselves changing inputs to see how the changes affect the portfolio returns, whereas Robb is premised on a system where actual participants collaborate and make recommendations to the user (investor). Nowhere within McDonald is there any disclosure or suggestion of the desirability of having collaboration, e.g., between a financial professional and a tax professional. In contradistinction, independent claims 1, 8 and 11 are directed to a completely different concept, that of providing “behavioral financial wellness” and helping the end user (an investor) maximize returns and develop sound investing habits by having virtual advisors who are chosen based on inputs from the user, and once in place the system periodically and continuously interacts with the user to demonstrate and educate sound investment strategies.
Examiner finds this unpersuasive.
MPEP 2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-01.2024]
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
“[T]he analysis that “should be made explicit” refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis … Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of ‘the inferences and creative steps,’ or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art.” Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
Examples of rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel. Any rationale employed must provide a link between the factual findings and the legal conclusion of obviousness.
Macdonald is directed to determining (i) an asset allocation recommendation using personalized profiling techniques, and (ii) asset allocation planning (including, but not limited to, asset allocation roll-down, asset growth analysis, withdrawal and saving strategy) using simulated asset projections (para [0001]). The personalized approach (typically conducted via questionnaires) takes consideration of certain elements of the individual's circumstances, such as the individual's financial situation (i.e., risk taking capacity), risk attitude (i.e., willingness to take risk), and goal planning of the individual's assets (para [0002]).
Robb is directed to providing a collaboration tool where advisors, clients and/or other participants may access client data, exchange data with other participants and communicate with each other (para [0001]). The present invention provides a common collaboration tool to interact, communicate and serve the client in a coordinated manner in various areas of interest (para [0011]). For example, advisors may include accountants, attorneys, financial planners, insurance agents, investment advisors, trust officers, and charitable officers. Other entities with experience and/or knowledge of a particular area of interest may be considered an advisor (para [0012]).
Examiner notes that generating personalized asset allocation recommendation based on receiving answers to questions involves collaboration between financial advisors and clients. Therefore, for the applicant is to assert that “nowhere within McDonald is there any disclosure or suggestion of the desirability of having collaboration” is not persuasive. For the above reasons, applicant’s arguments are not persuasive.
Conclusion
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/ARUNAVA CHAKRAVARTI/Primary Examiner, Art Unit 3692