DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This Office action is in response to Applicant’s communication filed on October 9, 2029. Amendments to claim 1 and addition of new claims 2-21 have been entered. Claims 2-21 are pending, and have been examined. The indication of allowable subject matter over prior art was already discussed in the Office action mailed on July 9, 2025 and hence not repeated here. The objections to the Specification, rejection and response to arguments are discussed below.
Specification
2. The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
3. The specification is objected to under 35 U.S.C. § 112 (a) as failing to support the subject matter set forth in the claims. The specification, as originally filed does not provide support for the invention as now claimed.
The test to be applied under the written description portion of 35 U.S.C. § 112 (a), is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of later claimed subject matter. Vas-Cat, Inc. v. Mahurkar, 935 F. 2d 1555, 1565, 19 USPQ2d 111, 1118 (Fed. Cir. 1991), reh'rg denied (.Fed. Cir. July 8, 1991) and reh'rg, en banc, denied (Fed. Cir. July 29, 1991).
Claim 1 includes the limitations
“generating, with a computing circuit, an interface;
displaying, with the computing circuit, the interface;
receiving, for an investor via the computing circuit and the displayed interface, at least one investing preference and at least one risk tolerance;
compiling, for the investor with the computing circuit, an electronic history, comprising:
(a) an identifier of the investor, and
(b) data identifying the received at least one investment preference and the received at least one risk tolerance;
storing, with the computing circuit, the electronic history;
in response to the received at least one investing preference and the received at least one risk tolerance, computing, with the computing circuit, an efficient frontier for investment portfolios;
displaying, with the computing circuit, a plot of the investment portfolios along the efficient frontier;
receiving, with the computing circuit, a selection of at least one of the displayed investment portfolios; and
micro-investing, automatically with the computing circuit, round-up funds in the selected at least one of the investment portfolios” (emphasis added).
However, the specification does not provide a written description disclosure to support the claimed underlined limitations in the claim”. In fact there is no mention of any ““computing circuit”, “micro-investing” and “round-up funds in the selected at least one of the investment portfolios” in the claim. Similar reasoning and rationale are applicable to the other independent claims 10 and 18 and the dependent claims 2-9, 11-17 and 19-21 also.
Claim Rejections - 35 USC § 112
4. The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
5. Claims 1-21 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. In particular, claims 1, 10 and 18 are rejected under 35 U.S.C. § 112 (a), because the specification does not provide a written description disclosure to support the claimed limitations as discussed in the objections to specification above. Similar reasoning and logic apply to the dependent claims. Dependent claims are also rejected by virtue of dependency on a rejected independent claim.
The rejections given below are interpreted in light of 35 U.S.C. § 112 rejections discussed above.
Claim Rejections - 35 USC § 101
6. 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.
7. Claims 1-21 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) a method of automatically micro-investing round-up funds in the selected at least one of the investment portfolios which is considered a judicial exception because it falls under the category of certain of methods of organizing human activity such as a fundamental economic practice as well as commercial/legal interactions including agreements as discussed below. This judicial exception is not integrated into a practical application as discussed below. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
Analysis
Step 1: In the instant case, exemplary claim 1 is directed to a process.
Step 2A – Prong One: The limitations of “A method, comprising:
generating, with a computing circuit, an interface;
displaying, with the computing circuit, the interface;
receiving, for an investor via the computing circuit and the displayed interface, at least one investing preference and at least one risk tolerance;
compiling, for the investor with the computing circuit, an electronic history, comprising:
(a) an identifier of the investor, and
(b) data identifying the received at least one investment preference and the received at least one risk tolerance;
storing, with the computing circuit, the electronic history;
in response to the received at least one investing preference and the received at least one risk tolerance, computing, with the computing circuit, an efficient frontier for investment portfolios;
displaying, with the computing circuit, a plot of the investment portfolios along the efficient frontier;
receiving, with the computing circuit, a selection of at least one of the displayed investment portfolios; and
micro-investing, automatically with the computing circuit, round-up funds in the selected at least one of the investment portfolios” as drafted, when considered collectively as an ordered combination without the italicized portions, is a process that, under the broadest reasonable interpretation, covers methods of organizing human activity such as a fundamental economic practice as well as commercial/legal interactions including resolution of agreements.
Computing an efficient frontier for investment portfolios is a fundamental economic practice. Receiving, with the computing circuit, a selection of at least one of the displayed investment portfolios and micro-investing, automatically with the computing circuit, round-up funds in the selected at least one of the investment portfolios” is a form of fulfilling agreements. Hence, the steps of the claim, considered collectively as an ordered combination, is directed to a method of organizing human activity.
That is, other than, a computing/computer circuit, and a display device with a user interface, nothing in the claim precludes the steps from being performed as a method of organizing human activity. The computing/computer circuit and a display device with a user interface have not been mentioned or described in the Specification. However, for the purpose of analysis these additional elements have been broadly interpreted to include generic computer components suitably programmed to perform the associated functions. Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. If the claim limitations, under the broadest reasonable interpretation, covers methods of organizing human activity but for the recitation of generic computer components, then it falls within the “Certain methods of organizing human activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A – Prong Two: The judicial exception is not integrated into a practical application. In particular, the claim only recites the additional elements of computing/computer circuit, and a display device with a user interface to perform all the steps. There is no description of any of these additional elements in the Applicant’s specification. The Examiner has broadly interpreted these additional elements to correspond to generic computer components suitably programmed to perform the claimed steps. Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. The computing/computer circuit and the other additional elements in all the steps are recited at a high-level of generality (i.e., as generic computer components performing generic computer functions) such that it amounts no more than mere instructions to apply the exception using generic computer components. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Hence, claim 1 is directed to an abstract idea.
Step 2B: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, using the additional elements (identified above) to perform the claimed steps of amounts to no more than mere instructions to apply the exception using generic computer components. The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Similar analysis and rationale apply to the other independent claims as well. Hence, independent claims 1, 10 and 18 are not patent eligible.
Dependent claims 2-9, 11-17 and 19-21, when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations only refine the abstract idea further.
For instance in claims 2 and 11, the steps “wherein the computing circuit includes at least one microprocessor or at least one microcontroller” under the broadest reasonable interpretation, are further refinements of methods of organizing human activity because they describe the type of the computing circuit. The Examiner would like to note that neither the one microprocessor or at least one microcontroller have been mentioned or described in the Specification.
In claims 3, 12 and 19, the steps “wherein:
displaying the interface includes displaying the interface on at least one display device; and
displaying the plot includes displaying the plot on the at least one display device” under the broadest reasonable interpretation, are further refinements of methods of organizing human activity because these steps describe the intermediate steps of the underlying process.
In claims 4-5, 13-14 and 20, the steps “wherein the at least one investing preference includes at least one investment category” and “wherein the at least one risk tolerance includes at least one risk tolerance of investing in at least one investment category” under the broadest reasonable interpretation, are further refinements of methods of organizing human activity because these steps describe the at least one investing preference and the at least one risk tolerance used in the intermediate steps of the underlying process.
In claims 6 and 15, the steps “wherein storing the electronic history includes storing the electronic history in at least one memory circuit” under the broadest reasonable interpretation, are further refinements of methods of organizing human activity because these steps describe the intermediate steps of the underlying process. The additional element of at least one memory circuit (not described in the Specification) is broadly interpreted to correspond to a generic memory circuit suitably programmed to perform the storage function. The at least one memory circuit performs a traditional function recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using generic computer components.
In claims 8, 17 and 21, the steps “wherein the micro-investing includes periodically purchasing, with the round-up funds using the computing circuit, the respective investments included in the selected at least one of the displayed investment portfolios in the determined respective fractions” under the broadest reasonable interpretation, are further refinements of methods of organizing human activity because these steps describe the intermediate steps of the underlying process.
In claim 9, the steps “wherein the respective investments to be included in each investment portfolio are in multiple investment categories” under the broadest reasonable interpretation, are further refinements of methods of organizing human activity because these steps describe the investments used in the intermediate steps of the underlying process.
In all the dependent claims, the judicial exception is not integrated into a practical application because the limitations are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using generic computer components. Also the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; the claims do not affect a transformation or reduction of a particular article to a different state or thing; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment. In addition, the dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. The claims as a whole, do not amount to significantly more than the abstract idea itself. For these reasons, the dependent claims also are not patent eligible.
Response to Arguments
8. In response to Applicant’s assertion on page 7 of the remarks that, the claims are not directed to merely an abstract idea and that the claims recite significantly more than any abstract idea, the Examiner respectfully disagrees.
The Examiner has already addressed this assertion in the rejection and hence no further clarification is deemed necessary. For the reasons stated in the rejections above, rejections of claims under 35 U.S.C. § 101 are maintained by the Examiner.
Conclusion
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
(a) SCOTT; James et al. (US Pub. A1) discloses a system and method that allows an advisor to identify allocations of investments to each of several model portfolios in each of several investment strategies selected by the advisor, and to select asset classes to use and features to supply, as well as to select a primary and secondary investment to use for tax loss harvesting. Each of several investors is linked to an advisor and prompted with questions whose answers provide an initial assignment of the investor to an investment strategy from among those selected by the advisor to which the investor is linked and a model portfolio of that strategy. Investments are made and redeemed and rebalancing occurs in accordance with the model portfolio of the investor and the allocations of the advisor for that model portfolio.
10. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Narayanswamy Subramanian whose telephone number is (571) 272-6751. The examiner can normally be reached Monday-Friday from 9:00 AM to 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Abhishek Vyas can be reached at (571) 270-1836. The fax number for Formal or Official faxes and Draft to the Patent Office is (571) 273-8300.
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/Narayanswamy Subramanian/
Primary Examiner
Art Unit 3691
October 28, 2025