DETAILED ACTION
Notice of Pre-AIA or AIA Status
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 of July 31, 2025. The rejections are stated below. Claims 1-9 are pending and have been examined.
Claim Objections
2. Claims 8 and 9 are objected to as being in improper dependent form under 37 C.F.R. § 1.75. Claim 8, which is directed to a "non-transitory computer-readable medium," and claim 9, which is directed to a "system," are improperly drafted as dependent claims from claim 1, which is directed to a method. A dependent claim must further limit the subject matter of the claim from which it depends. See MPEP § 608.01(n). Claims 8 and 9 do not further limit the method of claim 1 but instead attempt to claim different statutory categories. This objection is informal and may be overcome by canceling claims 8 and 9 and presenting new, independent claims 8 and 9 in proper independent form. For example, claim 8 should be rewritten in independent form to read substantially as follows (amendments shown):
8. At least one non-transitory computer-readable medium comprising program code stored thereon, wherein the program code, when executed by at least one processor of a computer system, is operative to cause the computer system to perform a method of facilitating optimization of after-tax wealth across a portfolio of taxable equity security tax-lots over at least one investment time period, said method comprising:
[Insert the full body of the method from claim 1].
Similarly, claim 9 should be rewritten to define the system by its hardware components (at least one processor, at least one non-transitory computer-readable medium) configured to perform the specific steps of the method, rather than merely referencing claim 1.
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.
3. Claims 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
4. Claim 1 is directed to the abstract idea of “portfolio optimization” which is grouped under “organizing human activity… fundamental economic practice” [hedging, mitigating risk) in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance).
5. Claim 1 recites “a method of facilitating optimization of after-tax wealth across a portfolio of taxable equity security tax-lots over at least one investment time period, said method being implemented by a … comprising at least … to perform the method comprising: said at least one … receiving tax data, data representing the tax-lots in said portfolio, equity security expectation data, and realized gain and loss data; said at least one … performing … based on said tax, tax lot, equity security expectation, and realized gain and loss data to determine a sequence for potentially selling a plurality of said tax-lots such that doing so would generate the greatest excess after-tax returns relative to holding the respective tax-lots over the at least one investment time period, wherein the … comprises updating the realized gain and loss data following the determination of each tax lot in the sequence for determining the next tax lot in the sequence, wherein the recommended tax-lot selling sequence is organized according to successively descending respective after-tax returns relative to holding the respective tax lot; and following said …, said at least … performing … to determine a sequence for potentially selling a plurality of residual ones of said tax-lots such that doing so would give up the least opportunity cost relative to holding the respective tax-lots over the at least one investment time period, wherein the … comprises updating the realized gain and loss data following the determination of each tax lot in the sequence for determining the next tax lot in the sequence, wherein the recommended tax-lot selling sequence is organized according to successively ascending respective return potential remaining over the at least one investment period relative to holding the respective tax lot”.
6. These limitations describe an abstract idea of portfolio optimization and corresponds to Certain Methods of Organizing Human Activity (fundamental economic practice including mitigating risk and hedging). Accordingly, claim 1 recites an abstract idea (Step 2A: Prong 1: YES).
7. The claim also recites as additional elements such as “a computer system comprising at least one processor operable in executing program code stored on at least one non-transitory computer-readable medium to cause the computer system to perform the method comprising: said at least one processor performing first reiterative processing, said at least one processor performing second reiterative processing” which do no more than implement the abstract idea and/or provide a particular technological environment. Therefore, claim 1 recites an abstract idea without a practical application (Step 2A - Prong 2: NO).
8. Further, as the additional elements of claim 1 do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field. Thus, claim 1 is not patent eligible (Step 2B: NO).
9. Claim 2 recites “… receiving data designating sale shares of a position comprising a plurality of tax lots; said at least one processor performing … based on said tax, tax lot, equity security expectation, and realized gain and loss data to determine a sequence for potentially selling a plurality of tax-lots of said position such that doing so would generate the greatest excess after-tax returns relative to holding the respective tax-lots of said position over the at least one investment time period, wherein the … comprises updating the realized gain and loss data following the determination of each tax lot in the sequence for determining the next tax lot in the sequence, wherein the recommended tax-lot selling sequence is organized according to successively descending respective after-tax returns relative to holding the respective tax lot of the position; and following said …, said at least … to determine a sequence for potentially selling a plurality of residual ones of said multiple tax-lots of said position designated for sale such that doing so would give up the least opportunity cost relative to holding the respective tax-lots of said position over the at least one investment time period, wherein the … comprises updating the realized gain and loss data following the determination of each tax lot of said position in the sequence for determining the next tax lot of said position in the sequence, wherein the recommended tax-lot selling sequence for said position designated for sale is organized according to successively ascending respective return potential remaining over the at least one investment period relative to holding the respective tax lot” which further defines the abstract idea. The claim recites “at least one processor, reiterative processing, at least one processor performing fourth reiterative processing” as additional elements. The additional elements do no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. Therefore, as they do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
10. Claim 3 recites “… receiving data designating sale of at least one share of each of one or more respective individual tax lots corresponding to one or more respective equities that are not of a common position; and … updating the realized gain and loss data to reflect the potential sale of the designated at least one share of each of the individual tax lots corresponding to one or more respective equities that are not of a common position” which further defines the abstract idea. The claim recites “said at least one processor” as an additional element. The additional element does no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. Therefore, as it does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, it does not improve computer functionality or improve another technology or technical field.
11. Claim 4 recites “… receiving data designating sale of at least one share of each of one or more respective individual tax lots corresponding to one or more respective equities that are not of a common position; and … updating the realized gain and loss data to reflect the potential sale of the designated at least one share of each of the individual tax lots corresponding to one or more respective equities that are not of a common position” which further defines the abstract idea. The claim recites “said at least one processor” as an additional element. The additional element does no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. Therefore, as it does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, it does not improve computer functionality or improve another technology or technical field.
12. Claim 5 recites “wherein at least … comprises tax-loss harvesting analysis” which further defines the abstract idea. The claim recites “first and second reiterative processing” as additional elements. The additional elements do no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. Therefore, as they do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
13. Claim 6 recites “wherein at least the … comprises for each iteration tax-lot strategy path analysis of each residual tax lot to identify a maximum strategy” which further define the abstract idea. The claim includes “first reiterative processing” as additional elements. The additional elements do no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as they do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
14. Claim 7 recites “further comprising the … receiving highest justifiable price data for the tax lots” which further define the abstract idea. The claim includes “at least one processor” as additional elements. The additional elements do no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as they do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
15. Claim 8 recites “at least one non-transitory computer-readable medium comprising code that, when executed by at least one processor, is operative to cause that at least one processor execute the method according to claim 1” as additional elements. The additional elements do no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as they do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
16. Claim 9 recites “system comprising at least one processor and at least one non-transitory computer-readable medium, the system being operable to execute the method according to claim 1” as additional elements. The additional elements do no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as they do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: 2004/00024677, 2004/0039675, 2011/0161247, 2003/0212622, 2010/0205110, 7110971, 7117176, 8200561.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN T POE whose telephone number is (571)272-9789. The examiner can normally be reached on Monday-Friday 9:30am through 6pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Calvin Hewitt can be reached on 571-272-6709. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.T.P/Examiner, Art Unit 3692 /KEVIN T POE/
/DANIEL S FELTEN/Primary Examiner, Art Unit 3692