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 .
Claim Rejections - 35 USC §101
1. 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.
2. Claims 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the MPEP § 2106, to determine the patent-eligibility of an application, a two- part analysis has to be conducted.
Part 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. See MPEP 2106.03.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories.
Under Step 2A (Prong 1), using claim 1 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “identify…manager investment information associated with a portfolio manager; facilitate the association of one or more clients with an investment strategy of the portfolio manager; identify a plurality of clients, each having a respective client investment account associated with the portfolio manager; and …mirror the manager investment position information to each client investment account of the plurality clients;…determining the respective weighing for each of the plurality of financial assets of the manager portfolio, and reallocating, for each client inv vestment account, the respective allocated value of the client investment account among the same plurality of financial assets to achieve an allocation for that client investment account that is substantially identical to the weightings for the manager portfolio ” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. The examiner further contends that these limitations can be performed in the human mind. Any action that can be performed in the human mind falls into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of additional elements including “portfolio management system; a processor and memory.” These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they are merely being applied to the abstract idea and being used as tools in executing the claimed process. In other words, these systems are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method these devices or systems are caused to perform these steps. Further, the limitations “the manager investment position information comprising a respective weighting for each of a plurality of financial asset of the manager portfolio; each client investment account being associated with a respective allocated value, and wherein the allocated value is distributed among the plurality of financial assets” do not recite additional elements. Rather, they are recited to further narrow the scope of the abstract idea. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 1 are the generically recited “portfolio management system; a processor and memory.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. The specification substantiates this, for instance at paras 0088. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The examiner contends that the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 1 and are rejected using the same rationale as in claim 1 above. More specifically, independent claim 5 though of a different scope from independent claim 1 do not recite additional elements but these additional elements are both a fundamental economic practice and a mental process, which are abstract ideas. Further, dependent claims 2, 4, 6-14 do recite additional elements, but these additional elements comprise the analyses of data, which is nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also see Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 3 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by BENTELER (US PUB:2008/0249952).
Re claim 3. BENTELER discloses a method comprising: identifying manager investment position information associated with a portfolio manager; facilitating the association of one or more clients with an investment strategy of the portfolio manager; identifying a client having an investment account associated with the portfolio manager; and mirroring the manager investment position information to the investment account of the client (see abstract, see fig.2, see 0007-0009).
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over BENTLER in view of Alcaly et al (Alcaly US PUB: 2002/0007329).
Re claim 4. BENTELER does not explicitly the method of claim 3, further comprising: determining a performance fee for the portfolio manager; and allocating the performance fee to the portfolio manager. Alcaly makes this disclosure (see paras 0023). Thus it would have been obvious to one of ordinary skill in the art to incorporate the performance fee teaching of Alcaly in the system of BENTELER in order to probably reward the portfolio manager.
Response to Arguments
Applicant's arguments filed on 12/08/25 have been fully considered but they are not persuasive.
In response to applicant’s argument that the claims recite a specific improved computer-implemented system for automated portfolio management that provides a practical application yielding technological benefits in automation, transparency, and compliance, the examiner disagrees. The examiner contends that there is a clear difference between the improvement in computer functionality, on one hand, and the use of existing computer as tools to perform a particular task, on the other. The alleged advantages and improvements that applicant touts do not concern an improvement to computer technology and capabilities but instead relate to an alleged improvement in computer-based process; that is, a process in which a computer is used as a tool in its ordinary capacity which is to process data. (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept’’); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea”); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“What is needed is an inventive concept in the non-abstract application realm’).
Further, the recited processor has been applied post-hoc to the abstract idea and a specific implementation of a solution to a problem in the software arts is not present. The examiner further contends that the improvements that the applicant touts are not found anywhere in the claim, nor does the specification provides support for what qualifies as the claimed technical improvements. The elements recited in the claims provide a commercial solution not a technical solution. As the Federal Circuit explained in Bancorp Svcs., LLC v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012), both Research Corp. and SiRF Tech, involved improvements to the underlying technology itself. That is not the case here. Rather here, as in Bancorp, the claimed invention merely uses the underlying computer technology in its ordinary capacity to perform processes “more efficiently.” See Bancorp, 687 F.3d at 1279.
Lastly, in response to applicant’s argument that the prior art fails to disclose mirroring the manager investment position information to the investment account of the client, the examiner contends that paragraphs 0007-0009 of BENTELER explicitly makes this disclosure.
Conclusion
In view of the applicant’s amendment and remarks filed on 12/08/25, the examiner has withdrawn the art rejection of claims 1-2, 5-14.
THIS ACTION IS MADE FINAL. 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 OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. 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 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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695