DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
The following is a final office action in response to the application filed 22 September 2025.
Applicant’s amendments to Claims 1, 16, and 20 have been received and are acknowledged.
Claims 1-20 have been examined and are pending.
Response to Arguments
Applicant's arguments filed 22 September 2025 have been fully considered but they are not persuasive.
Per the Office action of 12/10/2024 referencing Applicant’s previous response generally referencing the Specification and exemplary drawings, Examiner will interpret the term ‘category’ by its plain meaning and related determinations of categories and corresponding labels as a user design choice as exemplified by Applicant’s response referencing the drawings. As noted and in view of the disclosure and Applicant’s response, none of these labels/categories are terms of art or specifically defined in the disclosure. All claim elements are interpreted using broadest reasonable interpretation.
With regard to the rejections under 35 USC 112(a), Applicants argues a general definition of ‘fund categories’ as cited by a hyperlink to Wikipedia page in the footnote. It is noted that the dynamic footnote provided is not sufficient to establish the term of art the time invention. Nor has the citation been submitted as on a corresponding Information Disclosure Statement (IDS). Applicant’s reference to (Specification [3-9]), specifically discloses:
[0006] Oftentimes, personalizing a managed account for an investor may require a significant amount of manual effort by the managing party. For instance, in order to simplify the selection of a fund, a managing party may use a rigid list of target fund categories when selecting funds for those categories. A managing party may limit the number of funds from which to choose for a particular fund category to simplify the selection and distribution process.
Based on the disclosure of “…a managing party may use a rigid list of target fund categories when selecting funds for those categories…”, Examiner will interpret as a list of from which for selecting funds as disclosed. The rejection under 35 USC 112(a) is withdrawn.
With regard to the rejections under 35 USC 101, Applicant argues:
(1) That the recited:
“….the independent claims do not recite the alleged abstract idea of "selecting fund allocations for an investment account… the claims recite details of a database architecture for the database server with the database architecture including.. a fallback database having the specialized structure of "associat[ing] the target fund categories with fallback fund categories, wherein each of the target fund categories is associated with one or more of the fallback fund categories, wherein each fallback fund category is defined by one or more substitute fund categories corresponding to target fund categories and associated portions of the target allocation" and "a rank order of fallback levels for each target fund category, including at least a primary fallback fund category and, for one or more target fund categories, a second fallback fund category." These limitations, on their face, do not expressly state or describe the concept of "selecting fund allocations for an investment account." (Applicant’s response, 14-15) ...
(2) Further Applicant asserts:
“…the database server and database architecture, including the fallback database with the specialized structure claimed, improve the functioning of the application server computer by enabling it to efficiently handle a situation that it otherwise could not…. enables the application server computer to handle the situation where there are zero funds in a target fund category, but does so without resorting to the Byzantine and labor-intensive sequences…. Thus, the application server computer is improved by integrating the specialized fallback database structure in its operation to add improved functionality….” (Applicant’s response, 15-16)
(3) Applicant additionally asserts
“…the database server and database architecture, including the specialized fallback database structure, reflect a particular machine used by the application server computer (also a particular machine) to … implement the alleged abstract idea of "selecting fund allocations for an investment account" via the… specialized steps for handling the situation of there being zero funds in a target fund category…the fallback database is not claimed as a generic database, but as having the specialized structure of "associat[ing] the target fund categories with fallback fund categories,… " and "a rank order of fallback levels for each target fund category." … the application server computer is claimed as having a specialized integration with the fallback database in the form of the steps for handling the situation of there being zero funds in a target fund category. Implementation or use with a particular machine indicates a practical application… ” (Applicant’s response, 16-17)
(4) Applicant further argues:
“…the database server and database architecture, including the specialized fallback database structure-as well as the application server computer's function "in response to determining the number of matching funds being also does zero” not amount to mere instructions to implement the alleged abstract idea on a computer. Nor are these limitations insignificant post-solution activities. This, too, is indicative of integration into a practical application… the independent claims include additional elements that integrate the alleged abstract idea into a practical application.” (Applicant’s response, 17)
(5) Applicant concludes:
“….….at least the database server and database architecture, including the specialized fallback database structure-as well as the application server computer's function "in response to determining the number of matching funds being zero"-amounts to significantly more than just "selecting fund allocations for an investment account," …the limitations enable the claims as a whole to provide an efficient technical solution to the problematic situation of there being zero funds in a target fund category. Thus, the independent claims recite something more than the alleged abstract idea….”(Applicant’s response, 17)
Examiner respectfully disagrees as noted previously and in the rejection below. Examiner further notes that the disclosure including the specification do not disclose any specifics of the “database architecture” or “linking” or any mention of processor speed. Applicant’s arguments are unsupported and as such not persuasive. Applicant’s own specification states that the “…instant disclosure relates generally to investment accounts and, …to automated systems and methods for selecting fund allocations for investments…” (Specification [1]) and “ Disclosed are example automated systems and methods for selecting fund allocations for an investment account…” (Specification [10]). (Applicant’s argument 1). As noted previously, The instant claims are not analogous to the patent eligible claims of Enfish because unlike the patent eligible claims of Enfish, the instant claims are not an improvement to technology. As noted in the rejection previously and below, the recited invention merely uses a computer a as tool to perform an abstract idea or merely uses generic computing elements to perform well known, routine, and conventional functions. (See MPEP 2106.05 (d) and (f) ) The particular computing elements referenced in Applicant’s arguments are disclosed as: (Specification, [46] computer; [54] application server, processor…any suitable processing device…[55] non-transitory computer readable medium and computer readable medium…[57] the database service… is a SQL database server…and each of the fund database…is a SQL database…) These are not improvements to technology – rather at most the invention recite an improvement to the abstract idea.
As noted previously, Applicant has again argued that “common sense” would indicate that the “Byzantine sequences” are slower than the recited instant claims. A review of the specification notes that the term “Byzantine” is used twice in the specification; specifically:
[7] Oftentimes, upon identifying that there are no funds within the shortened list that satisfy the rigid checklist for selection of funds, a managing party may use a Byzantine and labor intensive sequence for investing that money in an alternative fund, which may delay the
investment of funds by months. Additionally, recordkeepers, for example, may frequently reclassify the categories for which some funds are designated. When this occurs, a fund previously selected for a particular category may no longer be designated for that category. In turn, the Byzantine and labor-intensive sequence for selecting an alternative fund may need to be used, thereby again delaying the investment of funds by months. (Specification, [7])
There is no definition of the term/phrase “Byzantine and labor-intensive sequence” as a term of art. As such, this phrase is an adjective used to add a description to an opinion rather than a supported fact. It is noted that Applicant’s characterization (as supported by Applicant’s Response, footnote 3) of the process as ““Byzantine and labor-intensive sequence” inherently indicates that the problem being solved is a ‘pre-Internet’ problem which can be solved manually. A further review of the specification also discloses the terms ‘link’ and ‘programming’ are also recited once each (Specification, [50-51]). In other words, Applicant’s arguments for ‘improvement … to the way the processor handles the specific no-fund situation…” are a general assertion, not supported and unavailing. Further, as stated previously, improved speed or efficiency in processing an abstract idea does not recite patent eligible subject matter ( See 2106.05 (f) “…Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit)….”) (Applicant’s argument 2-5) Applicant’s arguments are not persuasive.
With regard to the rejections under 35 USC 103, Examiner withdraws the rejections in view of Applicant’s amendment as noted below.
.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
When considering subject matter eligibility under 35 U.S.C. 101, (1) it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, (2a) it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so (2b), it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. ____ (2014).
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. In the instant case, the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
(1) In the instant case, the claims are directed towards a method and the system for selecting fund allocations for an investment account. In the instant case, Claims 16-19 are directed to a process. Claims 1-15 are directed to a system. Claims 20 are directed to computer readable media.
(2a) Prong 1: Selecting fund allocations for investment is categorized in/akin to the abstract idea subject matter grouping of: methods of organizing human activity [organizing human activity (commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)]. As such, the claims include an abstract idea.
The specific limitations of the invention are (a) identified to encompass the abstract idea include:
1. An … for selecting fund allocations for an investment account, the …comprising:
a …including:
an allocation …having one or more allocation tables, wherein each of the one or more allocation tables includes a plurality of cells, wherein each of the plurality of cells is linked to a target-allocation sub-table that associates target fund categories and respective target allocations, wherein each target fund category reflects a corresponding investment strategy;
a fallback … that associates the target fund categories with fallback fund categories, wherein each of the target fund categories is associated with one or more of the fallback fund categories,… , and wherein, each fallback fund category is defined by one or more substitute fund categories corresponding to target fund categories and associated portions of the target allocation, and wherein the fallback database further stores a rank order of fallback levels for each target fund category, including at least a primary fallback fund category and, for one or more target fund categories, a second fallback fund category, and
….configured to, in real-time upon a request for a participant:
collect an age of the participant;
determine a risk tolerance of the participant; and
retrieve a selected target-allocation sub-table from the allocation …based on, at least in part, the age and the risk tolerance of the participant; and
an … including:
… configured to …an available-funds table that includes an identifier code, a fund category, and a fund score for each available fund; and
one or more …, … is configured to,
for each of the target fund categories in the selected target-allocation sub-table and in real-time upon the request for the participant:
determine a number of matching funds within the available-funds table that correspond with the target fund category;
in response to the number of matching funds being one, assign a target allocation for the target fund category to a sole matching fund;
in response to the number of matching funds being two or more, select a selected matching fund based on a comparison of the fund score of each matching fund and assign the target allocation to the selected matching fund;
in response to the number of matching funds being zero, select as the fallback fund category the lowest-ranked fallback fund category for which the available-funds table includes an available fund for each of the substitute fund categories for the selected fallback fund category …. and assign the target allocation among the one or more substitute fund categories according to the associated portions …;
after processing the target fund categories, in response to determining that an available fund is selected for two or more of the target fund categories, add the corresponding allocation amounts together when generating an allocation list;
generate and… the allocation list, wherein the allocation list identifies an allocation amount assigned to each available fund selected for fund allocation.
16. An automated method for selecting fund allocations for an investment account, the automated method comprising:
providing a …with a… comprising:
an allocation …having one or more allocation tables, wherein each of the one or more allocation tables includes a plurality of cells, wherein each of the plurality of cellswherein each target fund category reflects a corresponding investment strategy;
the target-allocation sub-table; and
a fallback … that associates the target fund categories with fallback fund categories,fallback fund category is defined by, one or more substitute fund categories corresponding to target fund categories and associated portion of the target allocation and wherein, the fallback … stores a rank order of fallback levels for each target fund category including at least a primary fallback fund category and, for one or more target fund categories, a secondary fallback fund category ;
collecting,…., an age of a participant in real-time upon a request for the participant;
determining,…, a risk tolerance of the participant in real-time upon the request for the participant;
retrieving, in real-time upon the request for the participant, a selected target-allocation sub-table from the allocation … based on, at least in part, the age and the risk tolerance of the participant;
……, an available-funds table that includes an identifier code, a fund category, and a fund score for each available fund;
for each of the target fund categories in the selected target-allocation sub-table and in real-time upon the request for the participant:
determining,…, a number of matching funds within the available-funds table that correspond with the target fund category;
in response to the number of matching funds being one, assigning a target allocation for the target fund category to a sole matching fund;
in response to the number of matching funds being two or more, selecting a selected matching fund based on a comparison of the fund score of each matching fund and assigning the target allocation to the selected matching fund; and
in response to the number of matching funds being zero, selecting as a selected fallback fund category the lowest-ranked fallback fund category for which the available-funds table includes an available fund for each of the substitute fund categories that for the selected fallback fund category, and assigning the target allocation among the one or more substitute fund categoriesaccording to the associated portions; and
after processing the target fund categories, in response to determining that an available fund is selected for two or more of the target fund categories, combining the corresponding allocation amounts together when generating an allocation list;
generating and…, …, the allocation list wherein the allocation list identifies an allocation amount assigned to each available fund selected for fund allocation.
20. … to collectively:
provide a … with … comprising:
an allocation … having one or more allocation tables, wherein each of the one or more allocation tables includes a plurality of cells, wherein each of the plurality of cells is linked to a target-allocation sub-table that associates target fund categories and respective target allocations, wherein each target fund category reflects a corresponding investment strategy;;
the target-allocation sub-table; and
a fallback … that associates the target fund categories with fallback fund categories, wherein each of the target fund categories is associated with one or more of the fallback fund categories, wherein, , each fallback fund category is defined by one or more substitute fund categories corresponding to target fund categories and associated portions of the target allocation, and wherein the fallback database stores a rank order of fallback levels for each target fund category, including at least a primary fallback fund category and, for one or more target fund categories, a secondary fallback fund category;
collect an age of a participant in real-time upon a request for the participant;
determine a risk tolerance of the participant in real-time upon the request for the participant;
retrieve, in real-time upon the request for the participant, a selected target-allocation sub-table from the allocation database based on, at least in part, the age and the risk tolerance of the participant;
… an available-funds table that includes an identifier code, a fund category, and a fund score for each available fund;
for each of the target fund categories in the selected target-allocation sub-table and in real-time upon the request for the participant:
determine a number of matching funds within the available-funds table that correspond with the target fund category;
in response to the number of matching funds being one, assign a target allocation for the target fund category to a sole matching fund;
in response to the number of matching funds being two or more, select a selected matching fund based on a comparison of the fund score of each matching fund and assign the target allocation to the selected matching fund; and
in response to the number of matching funds being zero, select as a selected fallback fund category the lowest-ranked fallback fund category for which the available-funds table includes an available fund for each of the substitute fund categories that form associated with the selected fallback fund category and assign the target allocation among the substitute fund categories according to the associated portions …; and
after processing the target fund categories, in response to determining that an available fund is selected for two or more of the target fund categories, combine the corresponding allocation amounts together when generated an allocation list;
generate and … an the allocation list, wherein the allocation list identifies an allocation amount assigned to each available fund selected for fund allocation.
As stated above, this abstract idea falls into the (b) subject matter grouping of: methods of organizing human activity.
Prong 2: When considered individually and in combination, the instant claims are do not integrate the exception into a practical application because the steps of providing…, collecting… determining…retrieving…determining…assigning…selecting…assigning… selecting… assigning…generating…combining do not apply, rely on, or use the judicial exception in a manner that that imposes a meaningful limitation on the judicial exception (i.e. the abstract idea).
The instant recited claims including additional elements (i.e. storing…transmitting…) do not improve the functioning of the computer or improve another technology or technical field nor do they recite meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The limitations merely recite: “apply it” (or an equivalent) or merely include instructions to implement an abstract idea on a computer or merely uses a computer a as tool to perform an abstract idea or merely uses generic computing elements to perform well known, routine, and conventional functions or generally link the use of the judicial exception to a particular technological environment or field of use (See MPEP 2106.05 (d) and (f))
(2b) In the instant case, Claims 16-19 are directed to a process. Claims 1-15 are directed to a system. Claims 20 are directed to computer readable media.
Additionally, the claims (independent and dependent) do not include additional elements that individually or in combination are sufficient to amount to significantly more than the judicial exception of abstract idea (i.e. provide an inventive concept). As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of: (system, application, processors, database, database server ) merely uses a computer a as tool to perform an abstract idea or merely uses generic computing elements to perform well known, routine, and conventional functions. (See MPEP 2106.05 (d) and (f) ) (Specification, [46] computer; [54] application server, processor…any suitable processing device…[55] non-transitory computer readable medium and computer readable medium…[57] the database service… is a SQL database server…and each of the fund database…is a SQL database…)
The dependent claims have also been examined and do not correct the deficiencies of the independent claims.
It is noted that claim (2-15 and 17-19) introduce the additional elements of wherein clauses further defining allocation tables (Claim 2 …) collect…, select… retrieve… (Claim 3…) collect…(claim 4)…database server…(Claim 5) …identify…add…(Claim 6…) compare…compare…(Claim 7…) fund database (Claim 8…) …to select… (claim 9) … compare…(Claim 10)…randomly select…(Claim 11..) ..wherein the fallback database includes…(Claim 12…) …wherein one or more of the fallback fund categories include..…(Claims 13 and 18)..select…. determine… select… (Claims 14 and 19)… add … allocation… (Claim 15)… selecting… comparing… randomly selecting… (Claim 17) These elements are not a practical application of the judicial exception because the limitations merely recite: “apply it” (or an equivalent) or merely include instructions to implement an abstract idea on a computer or merely uses a computer a as tool to perform an abstract idea or merely uses generic computing elements to perform well known, routine, and conventional functions or generally link the use of the judicial exception to a particular technological environment or field of use (See MPEP 2106.05 (d) and (f)) Further these limitations taken alone or in combination with the abstract do not amount to significantly more than the abstract idea alone because the elements amount to mere use of a computer a as tool to perform an abstract idea or merely uses generic computing elements to perform well known, routine, and conventional functions. (See MPEP 2106.05 (d) and (f) ) (Specification, [46] computer; [54] application server, processor…any suitable processing device…[55] non-transitory computer readable medium and computer readable medium)
Therefore, claims 1-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
EXAMINER NOTE: Regarding Claim 20 recites “computer readable media.” Examiner notes that Applicant’s Specification [55] expressly excludes propagating signals.
Prior Art
The closest prior art of record of: US 8,429,051 Bl, Samson hereinafter referred to as Samson generally discloses a system and method for investment guidance which enables individuals to rate and select assets based on personal investment preferences including various features such as target asset allocation and filtering of funds based on preferences and US 2016/0171608 Al, Milner et al. hereinafter referred to as Milner generally discloses a method and system of finding similar funds.
Even though the prior art of record discloses the general concepts cited above, the prior art of record fails to teach a fallback fund category with a designated ranked primary and secondary fallback fund category. The specific claim language that the prior art of record fails to teach is:
-fallback fund category is defined by one or more substitute fund categories corresponding to target fund categories and associated portions of the target allocation, and wherein the fallback database further stores a rank order of fallback levels for each target fund category, including at least a primary fallback fund category and, for one or more target fund categories, a second fallback fund category
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20140279693 A1-Goal Based Portfolio management system.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHA PUTTAIA H whose telephone number is (571)270-1352. The examiner can normally be reached on M-F 9 am to 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas can be reached on 571-270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASHA PUTTAIA H/ Primary Examiner, Art Unit 3691