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 .
This is the Final Office Action in response to Amendment filed on May 18, 2026 for Application No. 19/022,409 filed on January 15, 2025, title: “System and Method for Trading Securities Using Portfolios Defined by An Advisor”.
Status of the Claims
Claims 1-20 were pending. By the 05/18/2026 Response, claims 1, 9, and 17 have been amended, and no claim has been cancelled or added. Accordingly, claims 1-20 are pending in this application and have been examined.
Priority
This application was filed on 01/15/2025 and is a CON of US Application No. 18/351,043 filed on 07/12/2023 (Abandoned), which is a CON of US Application No. 15/187,735 filed on 06/20/2016 (Patented No. 11,869,087) and has a US Provisional Application No. 62/182,406 filed 06/19/2015.
For the purpose of examination, the 06/19/2015 is considered to be the effective filing date.
Drawings
The drawings submitted on 01/15/2025 are acceptable to permit examination.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No.11,869,087. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined claims are broader than the reference claims in the patent and anticipated by the reference claims. The examined claims recite substantially the same limitations as the reference claims of the patent with minor variations that would have been obvious to one of ordinary skill in the art. The examined claims are either anticipated by, or would have been obvious over, the reference claims. The application and patent are directed to the same invention of trading securities using portfolios defined by an advisor. Also, both the application and patent have the same inventors and are commonly owned. Therefore, this rejection is deemed necessary.
Application No. 18/022,409
Patent No. 11,869,087
Claim 1, A method of managing a plurality of investments for a plurality of investors on a computer system that maintains investor accounts, the method comprising:
Claim 1, A computer-implemented method of managing a plurality of investments for a plurality of investors on a computer system that maintains investor accounts, comprising:
receiving, with the computer system, a plurality of investment strategies from a plurality of investment advisors, each investment strategy of the plurality of investment strategies including a plurality of model portfolios, each model portfolio of the plurality of model portfolios including a plurality of first indications, each first indication of the plurality of first indications indicating a percentage of the model portfolio to be allocated to an investment of a plurality of investments;
receiving, by the computer system, during a first period, from each of a plurality of investment advisors, each of whom is different from the plurality of investors, a plurality of investment strategies, each investment strategy of the plurality of investment strategies comprising a plurality of model portfolios, each model portfolio of the plurality of model portfolios comprising a plurality of first indications, each of the plurality of first indications indicating a percentage of the model portfolio to be allocated to an investment of the plurality of investments;
receiving, with the computer system, a selection of one of the plurality of investment advisors and answers to a plurality of questions from each of the plurality of investors;
receiving, by the computer system during a second period after the first period, from each of the plurality of investors, a selection of one of the plurality of investment advisors and answers to a plurality of questions;
linking, with the computer system, each of the plurality of investors to a model portfolio of an investment strategy of one of the plurality of investment advisors, responsive to the received answers and the received selection of each of the plurality of investors;
linking, by the computer system, each of the plurality of investors to a model portfolio of an investment strategy of one of the plurality of investment advisors, responsive to the answers received and the selection of each of the plurality of investors;
investing, with the computer system, funds of each of the plurality of investors based on the plurality of first indications in the model portfolio linked to each of the plurality of investors;
investing, by the computer system during a third period after the second period, funds of each of the plurality of investors responsive to the plurality of first indications in the model portfolio to which each of the plurality of investors is linked;
receiving, with the computer system, a second indication, from an investment advisor, indicating an updated percentage of an investment of the plurality of investments of a model portfolio of the investment advisor, the second indication superseding one of the plurality of first indications of the model portfolio of the investment advisor of the plurality of investment advisors; and
receiving, by the computer system, from one of the plurality of investment advisors during a fourth period after the third period, a second indication indicating an updated percentage of one of the investments of the plurality of investments of a model portfolio of the one of the plurality of investment advisors, the second indication superseding one of the plurality of first indications of the model portfolio of the one of the plurality of investment advisors;
rebalancing, with the computer system, investments of a subset of investors of the plurality of investors, the rebalancing including adjusting allocations of the investments of the plurality of investments of the subset of investors to align with the plurality of first indications and the second indication of the model portfolio linked to each investor of the subset of investors, the subset of investors of the plurality of investors being investors whose investments are not aligned with at least one of the plurality of first indications and the second indication prior to the rebalancing.
rebalancing, by the computer system during a fifth period after the fourth period, the investments of a subset of the investors of the plurality of investors, the rebalancing including adjusting allocations of investments of the plurality of investments of the subset of investors to align with the plurality of first indications and the second indication of the model portfolio linked to each investor of the subset of investors, the subset of investors of the plurality of investors being investors whose investments are not aligned with at least one of the plurality of first indications and the second indication prior to the rebalancing; and
receiving at the computer system, during a sixth period after the fourth period, an instruction to change an amount of the funds invested by an investor:
responsive to the instruction comprising an increase in the funds to be invested for the investor, purchasing for the investor investments aligned with the plurality of first indications and the second indication of the model portfolio linked to the investor; and
responsive to the instruction comprising a decrease in funds to be invested for the investor, selling a portion of at least one investment to maintain alignment with the plurality of first indications and the second indication of the model portfolio linked to the investor via a Transmission Control Protocol/Internet Protocol-compatible communication interface.
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 an abstract idea without significantly more
Step 1:
Under the 2019 Revised PEG, Step 1 analysis, the claims are reviewed to determine whether they fall within the four statutory categories of patentable subject matter (i.e., process, machine, manufacture, or combination of matter).
Claims 1-8 recite a method of managing a plurality of investments for a plurality of investors on a computer system that maintains investor accounts, claims 9-16 recite a system for managing a plurality of investments for a plurality of investors, and claims 17-20 recite a similar system for managing a plurality of investments for a plurality of investors. Therefore, the claims are directed to a process and machines which fall within the four statutory categories of invention (Step 1-Yes, the claims are statutory).
Step 2A Prong 1:
Under the 2019 Revised PEG, Step 2A, Prong 1, the claims are reviewed to determine whether they recite a judicial exception by identifying if the claim limitations fall in one of the enumerated abstract idea groupings (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability.
Claim 1 recites a method of managing a plurality of investments for a plurality of investors on a computer system that maintains investor accounts, the method comprising:
receiving, with the computer system, a plurality of investment strategies from a plurality of investment advisors, each investment strategy of the plurality of investment strategies including a plurality of model portfolios, each model portfolio of the plurality of model portfolios including a plurality of first indications, each first indication of the plurality of first indications indicating a percentage of the model portfolio to be allocated to an investment of a plurality of investments;
receiving, with the computer system, a selection of one of the plurality of investment advisors and answers to a plurality of questions from each of the plurality of investors;
linking, with the computer system, each of the plurality of investors to a model portfolio of an investment strategy of one of the plurality of investment advisors, responsive to the received answers and the received selection of each of the plurality of investors;
investing, with the computer system, funds of each of the plurality of investors based on the plurality of first indications in the model portfolio linked to each of the plurality of investors;
receiving, with the computer system, a second indication, from an investment advisor, indicating an updated percentage of an investment of the plurality of investments of a model portfolio of the investment advisor, the second indication superseding one of the plurality of first indications of the model portfolio of the investment advisor of the plurality of investment advisors; and
rebalancing, with the computer system, investments of a subset of investors of the plurality of investors, the rebalancing including adjusting allocations of the investments of the plurality of investments of the subset of investors to align with the plurality of first indications and the second indication of the model portfolio linked to each investor of the subset of investors, the subset of investors of the plurality of investors being investors whose investments are not aligned with at least one of the plurality of first indications and the second indication prior to the rebalancing.
The above limitation (underlined), as drafted, is a process that, under its broadest reasonable interpretation, covers a method of organizing human activity but for the recitation of generic computer components (e.g., a computer system comprising processors, memories with stored instructions). More specifically, the claim recites Fundamental Economic Practices and Commercial Interactions because it relates to a method of managing investments and allowing for investors to provide responses to questions and indications which in turn are linked to a model portfolio of an investment strategy provided by an investment advisor, so as to allow the investment advisor to allocate and rebalance investors’ investments according to investors’ responses.
If a claim limitation, under its broadest reasonable interpretation, covers performance of a fundamental economic practice or commercial interaction, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Claim 9 recites a computer system and claim 17 recites another similar computer with the similar elements and limitations as discussed in claim 1. Therefore, these claims also recite an abstract idea (Step 2A Prong 1-Yes, the claims recite an abstract idea).
Step 2A Prong 2:
Under the 2019 Revised PEG, Step 2A, Prong 2, the claims are reviewed to determine whether the judicial exception (i.e., abstract idea) is integrated into a practical application. In order to make this determination, the additional element(s), or combination of elements, are analyzed to determine if the claim as a whole integrates the recited judicial exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.
The independent claims (1, 9, and 17) include the additional computer elements such as a computer system comprising processors and memories with stored executable instructions (claims 9 and 17), a communication interface 302, advisor information storage 304, web browser 305, and system storage 306, are all recited at a high level of generality and merely invoked as tools to implement the abstract idea, and this is substantiated by the Applicant’s Specification (see Publication No. 2025/0156954, paragraphs 53-81 and Figure 3). Applicant’s Specification does not describe how these computer elements are different from the general computer components, and thus, they are treated as the general computer components.
The judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of a computer system comprising processors and memories. The computer system is recited at a high-level of generality (i.e., as a generic processor performing generic computer functions of receiving/transmitting communications, processing information, querying the database) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. 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. The independent claims are directed to an abstract idea (Step 2A Prong 2-No, the claims are not integrated into a practical application).
Step 2B:
Under the 2019 Revised PEG, Step 2B, the claims are reviewed to determine whether the claims provide an inventive concept (i.e., whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
The independent claims (1, 9, and 17) do not include additional elements, considered both individually and as an ordered combination, 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, the additional element of using a computer to perform the receiving, receiving, linking, investing, receiving, and rebalancing functions as claimed amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Therefore, the independent claims are not patent eligible.
Dependent claims 2-8, 10-16, and 18-20 depend on claims 1, 9, and 17 and therefore include all the limitations of claims 1, 9, and 17. Thus, the dependent claims recite the same abstract idea of a method of organizing human activity as discussed in the independent claims.
Claims 2 and 10 further include the additional elements “receiving an instruction to change an amount of the funds invested by an investor, wherein if the instruction includes a request to increase the funds to be invested for the investor, purchasing, for the investor, investments aligned with the plurality of first indications and the second indication of the model portfolio linked to the investor; and if the instruction includes a request to decrease the funds to be invested for the investor, selling a portion of at least one investment to maintain alignment with the plurality of first indications and the second indication of the model portfolio linked to the investor.” (Additional detailed instructions to change an amount of the funds invested by an investor - The claims individually or in combination with others do not integrate the abstract idea into a practical application or provide an inventive concept to the abstract idea).
Claims 3 and 11 further include the additional elements “wherein at least one of the rebalancing, the purchasing, or selling is responsive to an instruction received by the computer system from an investment advisor of the plurality of investment advisors.” (Additional detailed instructions about the rebalancing, purchasing, or selling is responsive to an instruction received from an advisor - The claims individually or in combination with others do not integrate the abstract idea into a practical application or provide an inventive concept to the abstract idea).
Claims 4 and 12 further include the additional elements “wherein the rebalancing excludes investments corresponding to the second indication when the investments corresponding to the second indication are designated as other investments.” (Additional detailed instructions about the rebalancing excluding investments are designed as other investments - The claims individually or in combination with others do not integrate the abstract idea into a practical application or provide an inventive concept to the abstract idea).
Claims 5 and 13 further include the additional elements “checking each investment strategy received against a set of rules, responsive to an indicator of whether the rules are or are not to be enforced; and outputting a providing an error responsive to the checking.” (Additional detailed instructions about checking each investment strategy against a set of rules and providing an error - The claims individually or in combination with others do not integrate the abstract idea into a practical application or provide an inventive concept to the abstract idea).
Claims 6-7 and 14-15 further include the additional elements “periodically analyzing, with the computer system, the investments of each of the plurality of investors to determine if the investments are aligned with each of the plurality of first indications and the second indication.” and “wherein the rebalancing occurs after the periodically analyzing for each investor of the plurality of investors whose investments are not aligned with each of the plurality of first indications and the second indication.” (Additional detailed instructions about periodically analyzing and rebalancing the investments if they are not aligned with the second indication - The claims individually or in combination with others do not integrate the abstract idea into a practical application or provide an inventive concept to the abstract idea).
Claims 8 and 16 further include the additional elements “periodically analyzing, with the computer system, the investments of each of the plurality of investors to determine if tax loss harvesting may be performed; and performing, with the computer system, tax loss harvesting on each of the investments of each of the plurality of investors that qualify for tax loss harvesting.” (Additional detailed instructions about analyzing and harvesting the investments to determine if they qualify for tax loss harvesting - The claims individually or in combination with others do not integrate the abstract idea into a practical application or provide an inventive concept to the abstract idea).
Claims 18-20 further include the additional elements “wherein the graphical display is a plurality of stacked bar charts, each bar chart of the plurality of stacked bar charts corresponding to a model portfolio of the plurality of model portfolios.”, “wherein each bar chart of the plurality of stacked bar charts includes a grid of cells corresponding to allocations for the model portfolio of the plurality of model portfolios and the adjustment to the graphical display indicating the updated percentage of one of the investments of the plurality of investments of the model portfolio is an adjustment to a cell of the grid of cells.”, and “wherein the second indication is an action performed by the investment advisor, the action being an adjustment of a bar between two bars of a bar chart of the plurality of stacked bar charts to adjust a size of at least one bar of the bar chart, the size of the at least one bar of the bar chart being used to determine the updated percentage of one of the investments of the plurality of investments of the model portfolio.” (Additional detailed instructions about the stacked bar charts and the second indication - The claims individually or in combination with others do not integrate the abstract idea into a practical application or provide an inventive concept to the abstract idea).
The dependent claims add no additional elements that make the claimed invention patent-eligible and only serve to further narrow the abstract idea. The dependent claims do not remedy the deficiencies in the independent claims and are thereby considered to be ineligible. Each of the dependent claims individually and in combination with its independent claims and others has been considered and concluded that they do not integrate the abstract idea into a practical application or add an inventive step to the abstract idea. The claims do not purport to improve the function of the computer itself, or to improve any other technology or technical field. Therefore, the dependent claims also are not patent eligible.
The focus of the claimed invention is on utilizing a computing system over a network for managing investments based on investors’ inputs (via questions and responses) and advisor’s investment strategy. The claims are not directed to a new type of processor, network, or system memory, nor do they provide a method of processing data that improves existing technological processes. The focus of the claims is not on improving computer-related technology, but on an independently abstract idea that uses computers as tools. The claims do not add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field. Accordingly, when viewed as a whole, the claims do no more than generally linking the use of the judicial exception to a particular technological environment or field of use.
The alleged improvement in Applicant’s claimed process for allocating and rebalancing investors’ investments according to investors’ responses does not concern an improvement to computer capabilities but instead relates to an alleged improvement in a business practice – a process in which a computer is used as a tool in its ordinary capacity. No inventive concept is found in the claims. Therefore, the claims do not add significantly more (i.e., an inventive concept) to the abstract idea (Step 2B-No, the claims are not significantly more than the abstract idea).
Therefore, in conclusion, the claims are not patent eligible under 35 USC § 101.
Response to Arguments
Double Patenting
In view of Applicant’s 05/18/2026 arguments, the rejection is MAINTAINED.
Claim Rejections - 35 USC § 112
In view of Applicant’s 05/18/2026 amendments, the rejection is withdrawn.
Claim Rejections - 35 USC § 101
Applicant's arguments filed on 05/18/2026 have been fully considered but they are not persuasive.
Step 2A, Prong 1:
Per page 12 of the Remarks, Applicant cites paragraph 47 and argues that the claimed invention is directed to a computer-implemented method of managing a plurality of investments for a plurality of investors on a computer system that maintains investor accounts.
The Examiner respectfully disagrees. As explained in the 101 analysis above, the claimed invention is basically “a business solution” to “a business problem” and this is supported in the cited paragraph 47 (see underlined).
[00047] The investor may supply funds for investment, redeem funds or have the funds rebalanced using the asset class allocations and investment allocations within the asset class, as specified by the advisor for that investor in accordance with the strategy and model portfolio stored for the investor, as well as the features assigned, as specified by the advisor, or the investor may have his or her portfolio tax loss harvested using conventional techniques. Investing, rebalancing and tax loss harvesting, as well as redemptions, may be automatically performed in accordance with the model portfolio and strategy selected by the investor and optionally modified by the investor and/or the investor's advisor, as well as the advisor's specifications of allocations of the asset classes and/or investments that correspond to the model portfolio of the investment strategy.
Per page 13 of the Remarks, Applicant further cites paragraph 51 and argues that the claimed invention provides for automatically modifying, rebalancing, and investing funds of a plurality of investors and is not a method of human activity.
The Examiner respectfully disagrees. As explained in the 101 analysis above, the alleged improvement in Applicant’s claimed process for allocating and rebalancing investors’ investments according to investors’ responses does not concern an improvement to computer capabilities but instead relates to an alleged improvement in a business practice – a process in which a computer is used as a tool in its ordinary capacity. No inventive concept is found in the claims. Therefore, Applicant’s arguments are not persuasive.
Step 2A, Prong 2:
Per pages 13-14 of the Remarks, Applicant cites the October 2019 Updated PEG and argues that the computer system is clearly doing more than receiving or transmitting data and processing data over a network and is clearly a practical application.
The Examiner respectfully disagrees. As explained in the analysis above, the focus of the claimed invention is on utilizing a computing system over a network for managing investments based on investors’ inputs (via questions and responses) and advisor’s investment strategy. The claims do not identify improvement to computer technology or computer functionality MPEP 2106.05(a), a particular machine MPEP 2106.05(b), or a particular transformation MPEP 2106.05(c). The claims are not directed to a new type of processor, network, or system memory, nor do they provide a method of processing data that improves existing technological processes. The focus of the claims is not on improving computer-related technology, but on an independently abstract idea that uses computers as tools. The claims do not add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field. Accordingly, when viewed as a whole, the claims do no more than generally linking the use of the judicial exception to a particular technological environment or field of use.
Therefore, Applicant’s amendments and arguments are not persuasive and the rejection of the claims under 35 USC § 101 is MAINTAINED.
Claim Rejections - 35 USC § 102/103
Applicant's arguments filed on 05/18/2026 have been considered and are persuasive. Therefore, the rejection is withdrawn. An updated prior art search did not identify any art that, individually or in combination with others, teaches each and every element and limitation of the claims at this time.
Conclusion
Claims 1-20 are rejected.
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 HAI TRAN whose telephone number is (571)272-7364. The examiner can normally be reached Monday-Friday, 9-5.
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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.
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HAI TRAN
Primary Examiner
Art Unit 3695
/HAI TRAN/Primary Examiner, Art Unit 3695
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