DETAILED ACTION
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 .
The present application claims priority for foreign application INDIA 202411007262 filed on 02/02/2024. Benefit of foreign priority is granted.
Status of Claims
Claims 1-20 are currently pending and rejected.
Claim Rejection – 35 U.S.C. 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. The rationale for this finding is explained below. In the instant case, the claims are directed towards investment portfolio planning. The concept is clearly related to managing human investing activities, thus the present claims fall within the Certain Method of Organizing Human Activity grouping. Moreover, the claimed procedure can be performed mentally and the result can be presented on paper, thus the present claims also fall within the Mental Processes grouping. The claims do not include limitations that are “significantly more” than the abstract idea because the claims do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Note that the limitations, in the instant claims, are done by the generically recited computer device. The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Therefore, claims 1-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Step 1: The claims 1-20 are directed to a process, machine, manufacture, or composition matter.
In Alice Corp. Pty. Ltd. V. CLS Bank Intern., 134 S. Ct. 2347 (2014), the Supreme Court applied a two-step test for determining whether a claim recites patentable subject matter. First, we determine whether the claims at issue are directed to one or more patent-ineligible concepts, i.e., laws of nature, natural phenomenon, and abstract ideas. Id. At 2355 (citing Mayo Collaborative Servs. V. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296–96 (2012)). If so, we then consider whether the elements of each claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.
Claims 1-14 are directed to a machine (i.e., device/system claims).
Claims 15-18 are directed to a manufacture (i.e., machine-readable medium claims).
Claims 19-20 are directed to a process (i.e., method claims)
Step 2A: The claims are directed to an abstract idea.
Prong One
The present claims are directed towards investment portfolio planning. The concept comprises receiving a set of user inputs related to portfolio planning, obtaining a plurality of projections for one or more asset classes based on an aggregated dataset, determining a set of values based on the set of user inputs and the plurality of projections, and deriving and presenting a portfolio plan using the set of values. Portfolio planning is a fundamental economic activity and managing human investment activities, thus the present claims clearly fall within the Certain Method of Organizing Human Activity grouping. Examiner also points out that the present claims, similar to the ineligible claims in Electric Power Group v. Alstom, recite obtaining data, analyzing data, and presenting result of the analysis. The claimed concept can be performed in the human mind and the result can be presenting on paper. As such, the present claims also fall within the Mental Processes grouping. The performance of the claim limitations using generic computer components (i.e., a processor and a memory) does not preclude the claim limitation from being in the certain methods of organizing human activity grouping or mental processes grouping. Accordingly, this claim recites an abstract idea.
Prong Two
The present claims recite a processor coupled with a memory as additional elements. The additional elements are claimed to perform basic computer functions, such as receiving user inputs, obtaining projections based on an aggregated dataset, determining a set of values based on user inputs and projections, deriving and presenting portfolio plan. The recitation of the computer elements amounts to mere instruction to implement an abstract concept on computers. The present claims do not solve a problem specifically arising in the realm of computer networks. The present claims do not recite limitation that improve the functioning of computer, effect a physical transformation, or apply the abstract concept in some other meaningful way beyond generally linking the use of the abstract concept to a particular technological environment. As such, the present claims fail to integrate into a practical application.
Step 2B: The claims do not recite additional elements that amount to significantly more than the abstract idea.
As discussed earlier, the present claims only recite a processor coupled with a memory as additional elements. The additional elements are claimed to perform basic computer functions, such as receiving user inputs (i.e. “receiving or transmitting data over a network”), obtaining projections based on an aggregated dataset (i.e., extracting data and performing calculations), determining a set of values based on user inputs and projections (i.e., performing calculations), deriving and presenting portfolio plan (i.e., performing calculations and analysis, and displaying result of analysis). According to MPEP 2106.05(d), “performing repetitive calculations”, “receiving, processing, and storing data”, “electronically scanning or extracting data from a physical document”, “electronic recordkeeping”, “storing and retrieving information in memory”, and “receiving or transmitting data over a network, e.g., using the Internet to gather data” are considered well-understood, routine, and conventional functions of computer. The present claims do not improve the functioning of computer or blockchain technology. Simply implementing the abstract idea on a generic computer or using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Therefore, the present claims are ineligible for patent.
In the response filed on 12/11/2025, Applicant amended independent claim 1, 15, and 19 by adding the following limitations: base on the deriving of the portfolio plan: (i) automatically causing alerts to be generated and presented and presented on a user display for a plurality of capital commitments that are to be made for at least one asset class of the one or more asset classes, wherein the alerts include fields that are prepopulated with corresponding amounts of capital that are to be transferred from a user account for allocation to be at least one asset class, (ii) automatically defining a schedule for transferring the corresponding amounts of capital from the user account for the allocation, and (iii) automatically causing the transferring to be performed in accordance with the schedule, thereby facilitating automated alerting of capital commitments and automated execution of capital transfers in accordance with the portfolio plan. Examiner points out that the amended features are merely describing automated trade recommendation and execution of the recommendation according to a portfolio plan. Such automation technology was well-known and widely used in the portfolio management field. The recitation of these features does not improve existing computer functionality or render the claims any less abstract.
Claim Rejection – 35 U.S.C. 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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nevins (Pub. No.: US 2005/0171882), in view of Cole (Pub. No.: US 2014/0279681) and Bove et al. (Pub. No.: US 2005/0154658).
As per claim 1, 15, and 19, Nevins teaches a device (see paragraph 0055), comprising:
a processing system including a processor; and a memory that stores executable instructions that, when executed by the processing system, facilitate performance of operations (see paragraph 0055, “the systematic approach of the present invention for committing capital to private equity is performed automatically on a periodic basis by software operating on a computer”; computer inherently comprises at least a processor and a memory), the operations comprising:
receiving a set of user inputs, wherein the set of user inputs includes a target portfolio market value, a target portfolio growth rate, a target strategic asset allocation (SAA) percentage, a desired allocation percentage for one or more asset classes, a desired number of future equal periodic capital commitments, a desired timeframe for achieving the target SAA percentage, or a combination thereof (see paragraph 0003, “Among the decision faced by private equity investors are the questions of how much capital to commit to the asset class and when to make additional commitments. These decisions should be determined by the investor’s asset allocation policy and, in particular, the desired allocation to private equity”; see paragraph 0006, “In one embodiment, targets are established for both invested capital and committed capital in the private equity portion of an investor’s portfolio. Invested capital represents the true exposure to private equity and its target is determined first, within the overall asset allocation process…The formula links the committed capital target to, among other things, an expected rate of return of the liquid portion of an investor’s portfolio, an expected rate of return of the private equity portion of the portfolio, an expected rate at which distributions are paid from the private equity portion of the portfolio, and an expected rate at which capital commitments associated with the private equity portion of the portfolio are invested”; also see paragraph 0021, 0024, and 0060);
obtaining a plurality of projections for the one or more asset classes based on an aggregated dataset relating to the one or more asset classes and based on information regarding existing capital commitments made in the one or more asset classes (see FIG. 3 and paragraph 0012, “FIG. 3 is a graph showing projected annual private equity commitments in a deterministic simulation used to test the private commitment methodology”; also see paragraph 0013-0014 and 0018-0019 for portfolio projections; see paragraph 0038, “Takashi and Alexander suggest projecting cash flows separately for each fund in which an investor participates. Funds are then aggregated to obtain estimates for cash flows and net asset values for the total portfolio”);
determining a set of values based on the set of user inputs and the plurality of projections, wherein the set of values includes a proposed amount of each of the future equal periodic capital commitments, a projected timeframe for reaching the target SAA percentage, proposed amounts of varying future capital commitments for individual periods in the desired timeframe, a rate of change relating to the proposed amounts of varying future capital commitments, or a combination thereof (FIG.3 shows capital commitments over time for the private equity asset class, where a rate of change would be determined based upon the capital commitment one year as compared to other years; FIG. 4 shows the output of the time it takes to reach a target SAA percentage; see paragraph 0003 and 0006, “The present invention manages private equity commitments in a way that directly links these decision to the investor’s asset allocation policy. In one embodiment, targets are established for both invested capital and committed capital in the private equity portion of an investor’s portfolio… The formula links the committed capital target to, among other things, an expected rate of return of the liquid portion of an investor’s portfolio, an expected rate of return of the private equity portion of the portfolio, an expected rate at which distributions are paid from the private equity portion of the portfolio, and an expected rate at which capital commitments associated with the private equity portion of the portfolio are invested”; see paragraph 0020, 0022, 0024, “In the present invention, a target is specified for the amount of committed capital as proportion of the total portfolio. In other words, just as an asset allocation strategy consists of targets for invested capital in each asset class, it should also include a target for committed capital in the case of private equity”; see paragraph 0048, “After each calculation of the committed capital target, the software may either automatically make/delay future private equity capital commitments, or alternatively, the software may make recommendations about future private equity capital commitments”; also see paragraph 0054, “The allocation target for invested capital should be determined within the overall capital asset allocation process. The allocation target for committed capital should cause invested capital to converge to its target when expectations for investment returns and private equity cash flows are met. Once a committed capital target is calculated, decisions regarding new commitments should be made systematically”; the values may include at least a proposed amount of future commitments, either equally or varying based upon market conditions over a period of time, a rate of change in capital commitments each year, and/or a timeframe to reach the garget asset allocation); and
deriving and presenting a portfolio plan using the set of values (see paragraph 0003, 0006, 0020, “The approach provided by the present invention is designed to minimize the difference between the target private equity allocation and the observed allocation. Furthermore, it provides a mechanism for adjusting future private equity commitments based on past experience”; see paragraph 0048, “After each calculation of the committed capital target, the software may either automatically make/delay future private equity capital commitments, or alternatively, the software may make recommendations about future private equity capital commitments”; see paragraph 0054, “Once a committed capital target is calculated, decisions regarding new commitments should be made systematically”; the values may include at least a proposed amount of future commitments, where a portfolio allocation plan is calculated for the user).
Examiner notes Nevins does not explicitly teach base on the deriving of the portfolio plan: (i) automatically causing alerts to be generated and presented and presented on a user display for a plurality of capital commitments that are to be made for at least one asset class of the one or more asset classes, wherein the alerts include fields that are prepopulated with corresponding amounts of capital that are to be transferred from a user account for allocation to be at least one asset class, (ii) automatically defining a schedule for transferring the corresponding amounts of capital from the user account for the allocation, and (iii) automatically causing the transferring to be performed in accordance with the schedule, thereby facilitating automated alerting of capital commitments and automated execution of capital transfers in accordance with the portfolio plan.
Cole teaches base on the deriving of the portfolio plan: (i) automatically causing alerts to be generated and presented and presented on a user display for a plurality of capital commitments that are to be made for at least one asset class of the one or more asset classes, wherein the alerts include fields that are prepopulated with corresponding amounts of capital that are to be transferred from a user account for allocation to be at least one asset class (see paragraph 0037, “The execution module 28 determines the quantities of assts to buy or sell in a client account based on a portfolio map for the client”; see FIG. 3 and paragraph 0055-0056, “The execution module would calculate the quantities of assets that needed to be bought and sold in order to arrive at an actual client portfolio that conforms, at least closely, to the proposed client portfolio shown in the proposed holdings display 48 of FIG. 3”; see paragraph 0064, “the website 20 causes the investment engine 26 to provide a proposed client portfolio based on the new client plan in step 76, which is then displayed by the website in step 78” ),
(ii) automatically defining a schedule for transferring the corresponding amounts of capital from the user account for the allocation, and (iii) automatically causing the transferring to be performed in accordance with the schedule, thereby facilitating automated alerting of capital commitments and automated execution of capital transfers in accordance with the portfolio plan (see paragraph 0037 and 0066, “the execution module 28 buys (or causes the third party trader 18 to buy) the amount of the asset indicated by the proposed portfolio map. If the first asset is not a new asset, then in step 96 the execute module 28 determines the amount of the first asset to buy or sell to go from the amount of the asset in the current client portfolio to the amount of the asset indicated by the proposed portfolio map. In step 98, the execution module 28 buys or sells (or causes the third party trader 18 to buy or sell) the amount determined in step 96”).
Bove also teaches base on the deriving of the portfolio plan: (i) automatically causing alerts to be generated and presented and presented on a user display for a plurality of capital commitments that are to be made for at least one asset class of the one or more asset classes, wherein the alerts include fields that are prepopulated with corresponding amounts of capital that are to be transferred from a user account for allocation to be at least one asset class (see paragraph 0006 and claim 1, “automatically generate financial transaction recommendations for modifying the client’s current asset portfolio to reach as close as possible to the desired asset allocation…displaying the recommendations on a summary report for review by the client”); and
(ii) automatically defining a schedule for transferring the corresponding amounts of capital from the user account for the allocation, and (iii) automatically causing the transferring to be performed in accordance with the schedule, thereby facilitating automated alerting of capital commitments and automated execution of capital transfers in accordance with the portfolio plan (see paragraph 0006, “the recommendations may be electronically communicated to a trade execution computer which automatically performs the necessary transactions to execute the buy/sell recommendations”; also see paragraph 0113).
It would have been obvious to one of ordinary skill at the effective filing date of the present application to modify Nevins with teaching from Cole and Bove to include base on the deriving of the portfolio plan: (i) automatically causing alerts to be generated and presented and presented on a user display for a plurality of capital commitments that are to be made for at least one asset class of the one or more asset classes, wherein the alerts include fields that are prepopulated with corresponding amounts of capital that are to be transferred from a user account for allocation to be at least one asset class, (ii) automatically defining a schedule for transferring the corresponding amounts of capital from the user account for the allocation, and (iii) automatically causing the transferring to be performed in accordance with the schedule, thereby facilitating automated alerting of capital commitments and automated execution of capital transfers in accordance with the portfolio plan. The modification would have been obvious, because it is merely applying a known technique (i.e., automating asset purchasing based on portfolio recommendation) to a known device (i.e., portfolio pacing) ready to provide predictable result (i.e., save human labor and speed up trade execution).
As per claim 2, Nevins teaches wherein the target SAA percentage comprises a private investment (PI) SAA percentage of a total portfolio (see paragraph 0003, 0006, and 0021).
As per claim 3 and 17, Nevins teaches wherein the one or more asset classes comprise private investment (PI) asset classes that include private credit, core private equity (PE), growth equity or venture capital, and real assets (see paragraph 0003, 0006, 0021, 0035, and 0044).
As per claim 4, 16, and 20, Nevins teaches wherein the set of values further comprises proposed amounts of additional future capital commitments that are needed to maintain the target SAA percentage (see paragraph 0003, “Among the decisions faced by private equity investors are the questions of how much capital to commit to the asset class and when to make additional commitments”; see paragraph 0006, “The formula links the committed capital target to, among other things, an expected rate of return of the liquid portion of an investor’s portfolio, an expected rate of return of the private equity portion of the portfolio, an expected rate at which distributions are paid from the private equity portion of the portfolio, and an expected rate at which capital commitments associated with the private equity portion of the portfolio are invested”; see paragraph 0048, After each calculation of the committed capital target, the software may either automatically make/delay future private equity capital commitments, or alternatively, the software may make recommendations about future private equity capital commitments”; also see paragraph 0054, “Once a committed capital target is calculated, decisions regarding new commitments should be made systematically”).
As per claim 5 and 18, Nevins teaches wherein the plurality of projections comprise a projected net asset value (NAV)-to-committed-capital conversion ratio for at least one of the one or more asset classes (FIG. 2 shows the NAV over time, while FIG. 3 shows capital commitments over time, allowing for a ratio between NAV and committed capital to be determined; see paragraph 0011, “FIG. 2 is a graph showing cumulative annual investments, distributions, and net asset value by fund age for a sample of liquidated funds used for modeling cash flows for an ongoing investments in private equity”; see paragraph 0033, “Investment and distributions are expressed as a percentage of total committed capital. The net asset value, which represents invested capital, is also aggregated”; also see paragraph 0038, “Takashi and Alexander suggest projecting cash flows separately for each fund in which an investor participates. Funds are then aggregated to obtain estimates for cash flows and net asset values for the total portfolio”).
As per claim 6, Nevins teaches wherein the plurality of projections comprise a projected net asset value (NAV) of existing capital commitments for at least one of the one or more asset classes (FIG. 2 shows the NAV over time, while FIG. 3 shows capital commitments over time for private equity, but all asset classes may be used; see paragraph 0003, 0006, 0011, “FIG. 2 is a graph showing cumulative annual investments, distributions, and net asset value by fund age for a sample of liquidated funds used for modeling cash flows for an ongoing investments in private equity”; see paragraph 0033, “Investment and distributions are expressed as a percentage of total committed capital. The net asset value, which represents invested capital, is also aggregated”; also see paragraph 0038, “Takashi and Alexander suggest projecting cash flows separately for each fund in which an investor participates. Funds are then aggregated to obtain estimates for cash flows and net asset values for the total portfolio”).
As per claim 7, Nevins teaches wherein, for a portfolio plan that involves equal periodic capital commitments, the set of user inputs includes the target portfolio market value, the target portfolio growth rate, the target SAA percentage, the desired allocation percentage for the one or more asset classes, and the desired number of future equal periodic capital commitments, and the set of outputs includes the proposed amount of each of the future equal periodic capital commitments and the projected timeframe for reaching the target SAA percentage (see paragraph 0003, “Among the decision faced by private equity investors are the questions of how much capital to commit to the asset class and when to make additional commitments. These decisions should be determined by the investor’s asset allocation policy and, in particular, the desired allocation to private equity”; see paragraph 0006, “In one embodiment, targets are established for both invested capital and committed capital in the private equity portion of an investor’s portfolio. Invested capital represents the true exposure to private equity and its target is determined first, within the overall asset allocation process…The formula links the committed capital target to, among other things, an expected rate of return of the liquid portion of an investor’s portfolio, an expected rate of return of the private equity portion of the portfolio, an expected rate at which distributions are paid from the private equity portion of the portfolio, and an expected rate at which capital commitments associated with the private equity portion of the portfolio are invested”; also see paragraph 0021, 0023, 0024, “In the present invention, a target is specified for the amount of committed capital as a proportion of the total portfolio. In other words, just as an asset allocation strategy consists of target for invested capital in each asset class, it should also include a target for committed capital in the case of private equity…In the present invention, when committed capital in the private equity portion of the investor’s portfolio rises above the target, investors should delay further capital commitments in the private equity portion of the investor’s portfolio. When committed capital in the private equity portion of the investor’s portfolio falls below the target, investors should make new capital commitments in the private equity portion of the investor’s portfolio”; prior art teaches equal or decreasing commitments may be used; input include at least a desired allocation percentage, future capital commitments, and target returns/growth rate).
As per claim 8, Nevins teaches wherein, for a portfolio plan that involves decreasing periodic capital commitments, the set of user inputs includes the target portfolio market value, the target portfolio growth rate, the target SAA percentage, the desired allocation percentage for the one or more asset classes, and the desired timeframe for achieving the target SAA percentage, and the set of outputs includes the proposed amounts of varying future capital commitments for individual periods in the desired timeframe, a rate of change relating to the proposed amounts of varying future capital commitments, or both (see paragraph 0003, “Among the decision faced by private equity investors are the questions of how much capital to commit to the asset class and when to make additional commitments. These decisions should be determined by the investor’s asset allocation policy and, in particular, the desired allocation to private equity”; see paragraph 0006, “In one embodiment, targets are established for both invested capital and committed capital in the private equity portion of an investor’s portfolio. Invested capital represents the true exposure to private equity and its target is determined first, within the overall asset allocation process…The formula links the committed capital target to, among other things, an expected rate of return of the liquid portion of an investor’s portfolio, an expected rate of return of the private equity portion of the portfolio, an expected rate at which distributions are paid from the private equity portion of the portfolio, and an expected rate at which capital commitments associated with the private equity portion of the portfolio are invested”; also see paragraph 0021, 0023, 0024, “In the present invention, a target is specified for the amount of committed capital as a proportion of the total portfolio. In other words, just as an asset allocation strategy consists of target for invested capital in each asset class, it should also include a target for committed capital in the case of private equity…In the present invention, when committed capital in the private equity portion of the investor’s portfolio rises above the target, investors should delay further capital commitments in the private equity portion of the investor’s portfolio. When committed capital in the private equity portion of the investor’s portfolio falls below the target, investors should make new capital commitments in the private equity portion of the investor’s portfolio”; prior art teaches equal or decreasing commitments may be used; input include at least a desired allocation percentage, future capital commitments, and target returns/growth rate).
As per claim 9, Nevins teaches wherein the determining involves an analysis of the aggregated dataset (see paragraph 0021 and 0038).
As per claim 10, Nevins teaches wherein the determining is based at least in part on an assumption that additional committed capital made for each period for a given asset class follows a median level residual-value-to-committed capital (RVCC) trajectory (see paragraph 0023-0024, “In the present invention, a target is specified for the amount of committed capital as a proportion of the total portfolio. In other words, just as an asset allocation strategy consists of target for invested capital in each asset class, it should also include a target for committed capital in the case of private equity…In the present invention, when committed capital in the private equity portion of the investor’s portfolio rises above the target, investors should delay further capital commitments in the private equity portion of the investor’s portfolio. When committed capital in the private equity portion of the investor’s portfolio falls below the target, investors should make new capital commitments in the private equity portion of the investor’s portfolio”; deriving the relationship between the additional committed capital made for each period for a given asset class and a median level-residual-value-to-committed capital (RVCC) trajectory as recited in the claim is a matter of mere mathematical manipulation, a known practice in the art).
As per claim 11, Nevins teaches wherein the determining involves use of a quantitative model that is configured to generate a range of cash flow projections relating to paid-in capital, distributions, net asset value (NAV), or a combination thereof (see paragraph 0031, 0033, and 0038).
As per claim 12, Nevins teaches wherein the determining comprises solving for one or more conditions involving various inputs in the set of user inputs (see paragraph 0021 and 0040).
As per claim 13, Nevins teaches wherein one or more of the receiving, the deriving, and the presenting are performed via a user interface (UJ) (see paragraph 0006, 0048, and 0055, “the software may make recommendations about future private equity capital commitments (i.e., whether to commit further capital or delay commitments) which are then acted upon by the investor or a party acting on the investor’s behalf”; software implies a graphical user interface is utilized).
As per claim 14, Nevins teaches wherein at least a portion of the portfolio plan is presented in one or more graphs, one or more tables, or a combination thereof (see FIG. 1-10, which show various graphs that include projections and other information related to a portfolio plan; also see paragraph 0010-0011).
Response to Remarks
In the response filed on 12/11/2025, Applicant amended independent claim 1, 15, and 19 by adding the following limitations:
Base on the deriving of the portfolio plan: (i) automatically causing alerts to be generated and presented and presented on a user display for a plurality of capital commitments that are to be made for at least one asset class of the one or more asset classes, wherein the alerts include fields that are prepopulated with corresponding amounts of capital that are to be transferred from a user account for allocation to be at least one asset class, (ii) automatically defining a schedule for transferring the corresponding amounts of capital from the user account for the allocation, and (iii) automatically causing the transferring to be performed in accordance with the schedule, thereby facilitating automated alerting of capital commitments and automated execution of capital transfers in accordance with the portfolio plan.
Examiner points out that the amended features are merely describing automated trade recommendation and execution of the recommendation according to a portfolio plan. Such automation technology was well-known and widely used in the portfolio management field. The recitation of these features does not improve existing computer functionality or render the claims any less abstract.
Rejection under 35 U.S.C. 101
Applicant's arguments filed 12/11/2025 have been fully considered but they are not persuasive.
Applicant argued that the amended independent claim 1 recites features that are in stark contrast to mere mental processes. Examiner disagrees and points out that the amended features are simple automation of manual processes. For example, presenting capital commitments to be made can be implemented on paper, defining a schedule for transferring capital and causing the transferring to be performed could be performed by human. Paragraph 0018 of the specification discloses without the aid of the claimed invention, “analyzing existing holdings and forecasting outcomes would need to be performed by hand or using a computer, which would require the manual entry of data values and construction of mathematical formulas on spreadsheets or the like”. This disclosure clearly suggests the claimed invention could be performed manually by human, and the invention is merely an automation of tasks previously performed by human. The automation of these features was well-known prior to the present application, as evident in Cole (Pub. No.: US 2014/0279681) and Bove et al. (Pub. No.: US 2005/0154658), and as such, the automation is merely extra-solution does not improve existing computer functionality. The performance of the claim limitations using generic computer components (i.e., a processor and a memory) does not preclude the claim limitation from being in the mental processes grouping. Moreover, the present claims also fall under the certain methods of organizing human activity grouping, which Applicant did not address.
Applicant argued that claim 1 “conserves computer processing resources and computer power resources that would otherwise need to unduly expended by numerous advisors conducting quantification for strategy allocation and portfolio targets”. Examiner disagrees and points out that the claimed invention is an automation of manual tasks. It replaces human processing with computer processing, and as such it does not reduce computer processing resources. The features recited in claim 1 do not improve computing efficiency or reduce resource consumption compared to existing computer technology. Rather, claim 1 merely utilize existing computer functionalities to implement an abstract idea.
Applicant further argued that claim 1 “provides for at least he practical applications of automating capital transfer and automatically alerting users to requisite timing of commitments that need to be bade based on a constructed portfolio solution”. Examiner disagrees and points out that Applicant did not provide any rationale to support the argument. Examiner points to the Federal Circuit decision of Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017), where the court ruled “mere automation of manual processes, such as using a generic computer to process an application for financing a purchase” is not sufficient to improve computer function or integrate an abstract concept into practical application. Similarly, the present claims recite mere automation of manual tasks, and thus they do not integrate the abstract concept into a practical application.
For these reasons, Examiner maintains the ground of rejection under 35 U.S.C. 101.
Rejection under 35 U.S.C. 102/103
Examiner cites two new prior arts - Cole (Pub. No.: US 2014/0279681) and Bove et al. (Pub. No.: US 2005/0154658) – to address the amended features. Updated rejection is provided in this Office Action.
Conclusion
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 HAO FU whose telephone number is (571)270-3441. The examiner can normally be reached 9:00 AM - 6:00 PM PST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine M Behncke can be reached at (571) 272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HAO FU/Primary Examiner, Art Unit 3695
JAN-2026