otice 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 Status
Claims 1-20 are currently pending and are presented for examination on the merits.
Priority
Applicant's claim for the benefit of U.S. provisional patent application 62/037651, filed August 15, 2014, US provisional patent application 62/119721, filed on 2/23/2015 (and progeny) under 35 U.S.C. 119(e) and 120 is acknowledged.
Objection to Specification
At ¶ [0022], please correct “the a preset glide path . . .” Please make similar corrections where required.
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 they recite non-patentable subject matter under MPEP § 2106 (e.g., the 2019 PEG). The claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, 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. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under the 2019 PEG, step 2a-prong 1, Claims 1-20 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps are directed towards the trading securities having underlying assets of mixed long and short duration, which is a long standing commercial practice and/or economic principle. For example, futures contracts have long been sold as interests in various assets (e.g., stocks, stock dividends, etc.). As such, the claims include an abstract idea under MPEP § 2106. Under Step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure –a system, processing unit, at least one computer readable memory; the specific algorithm recited, the specific durations recited) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h), and/or generally instruct an artisan to apply it (the method) across generic computing technology. More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements recite insignificant extra-solution activity (specifying 30 years and 10 years), and applies the abstract idea across generic computing technology. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular, albeit well-understood, routine and conventional technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea).
Courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data. MPEP 2106.05(d)
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 8 is indefinite at “wherein a sum of the first percentage and the second percentage is approximately the target duration”. It is not clear how the sum of two percentages can be expressed in duration (e.g., years). Please clarify and/or amend the claim as necessary to convey the intended scope. Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under § 103, as being unpatentable over US 2013/0018818 to Yadav, alone.
With respect to Claims 1 and 10, Yadav teaches a method (Abstract) and computing system (FIGS. 1,2), comprising: at least one processing unit (FIG. 2); at least one computer readable memory that stores computer-executable instructions (FIG. 2) that when executed by the at least one processing unit, causes the computing system to: determine a target duration ([0277], “target bounds” may include duration as the constraint; claim 11 therein “optimization” teaches target) of an equity fund and store the target duration in the at least one computer readable memory ([0163];[0167];[0255]); determine a long duration equity component having a duration of 30 years or more (Table 8); determine a short duration equity component having a duration of 10 years or less (Table 8); and determine a ratio of the long duration equity component and a ratio (Table 7 teaches taking a ratio of stocks to reach target) of the short duration equity component in the equity fund that achieves the target duration ([0255]; claim 11; Table 8 shows a ratio between 10 securities).
Yadav teaches an equivalent system operable to perform the method recited in the instant invention, but does not use the same verbiage, such as “target duration,” “long duration equity component,” etc., however, the applied reference(s) need not use the same terminology, or disclose the limitations verbatim. A long-term equity component could simply be a stock, stock dividend, etc. Yadav teaches optimization of a fund, duration being a constraint, a ratio of stocks composing a fund, a fund comprising of securities of variable duration, including one more than 30 years (e.g., 68 years) and shorter than 10. Moreover, it would have been obvious to try these numbers of years, since they are a design choice. See, KSR international Co. v. Teleflex Inc. As such, it would have been obvious to one of ordinary skill in the art to modify Yadav to include the specified method/algorithm recited herein.
With respect to Claims 2, and 11, Yadav teaches wherein the short duration equity component includes one or more of: a dividend future contract that takes a position on future dividends of one or more stocks; or a dividend future index that takes a position on future dividends of stocks in an index. Abstract;[0077];[0037]
With respect to Claims 3, and 12, Yadav teaches wherein the short duration equity component includes a plurality of short duration equities (Table 8); and wherein the computing system is further caused to determine the duration of the short duration equity component from a weighted average of a duration of each of the plurality of short duration equities ([0094]).
With respect to Claims 4 and 13, Yadav teaches wherein the computing system is further caused to determine the duration of one of the plurality of short duration equities using a maturity date of the dividend future contracts of the one of the plurality of short duration equities. ([0167-68];[0193];[0255])
With respect to Claims 5, and 14, Yadav teaches wherein the long duration equity component includes one or more of: an individual stock, an equity value component, an equity index, and an equity portfolio including two or more stocks (Abstract; [0077]; Table 8).
With respect to Claims 6, and 15, Yadav teaches wherein the long duration equity component includes a plurality of long duration equities (Table 8); and wherein the computing system is further caused to determine the duration of the long duration equity component from a weighted average of a duration of each of the plurality of long duration equities ([0094]).
With respect to Claims 7, and 16, Yadav teaches wherein the computing system is further caused to determine the duration of one of the plurality of long duration equities using an annual dividend yield of the one of the plurality of long duration equities. [0148-58]
With respect to Claims 8, and 17, Yadav teaches wherein the computing system is further caused to determine the ratio of the long duration equity component and the ratio of the short duration equity component by: determining the duration of the long duration equity component and the duration of the short duration equity component (Table 8, see associated solution); determining a first percentage of the duration of the long duration equity component and a second percentage of the duration of the short duration equity component (Table 8, see associated solution), wherein a sum of the first percentage and the second percentage is approximately the target duration; and storing the first percentage as the ratio of the long duration equity component and the second percentage as the ratio of the short duration equity component (Table 8, see associated solution).
With respect to Claims 9, and 18, Yadav teaches wherein the computing system is further caused to: after a predetermined time interval, determine an updated duration of the long duration equity component and an updated duration of the short duration equity component ([0046]); determine a first updated percentage of the updated duration of the long duration equity and a second updated percentage of the updated duration of the short duration equity, wherein a sum of the first updated percentage and the second updated percentage is approximately the target duration; and store the first updated percentage as an updated ratio of the long duration equity component and the second updated percentage as an updated ratio of the short duration equity component ([0046]).
With respect to Claim 19, Yadav teaches wherein determining the target duration of the targeted duration equity fund for the investor comprises: determining a risk profile of the investor; determining the target duration of the equity fund for the investor using the risk profile. ([0053], investor’s profile)
With respect to Claim 20, Yadav teaches determining a preset glide path for the targeted duration equity fund using the risk profile of the investor ([0053]), wherein the preset glide path includes a predefined time interval for updating the target duration and/or the ratio of the long duration equity component and the ratio of the short duration equity component. [0046]
Conclusion
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/WILLIAM J JACOB/Examiner, Art Unit 3696
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