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 .
Status of Claims
This action is in reply to the application filed on May 9, 2025.
Claim(s) 1-20 are currently pending and have been examined.
This action is made Non-Final.
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 10-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claims 10-17 are directed to a computer program per se or data structure of a computer or software and therefore not statutory under 35 U.S. C. 101. This is exemplified in In re Warmerdam 31 USPQ2d 1754 where the rejection of a claim to a disembodied data structure was affirmed. Thus a claim to a data structure, per se, or other functional descriptive material, including computer programs, per se, is not patent eligible subject matter. Claim 10 is claiming a computer network in the preamble, but the limitations include “one or more collateral databases” and “a secured lending benefit analysis tool.” Neither of these limitations are described in the Specification as hardware. Therefore, the broadest reasonable interpretation of each of these limitations includes software or data, which is not one of the statutory categories. To overcome this rejection, the claims should positively recite hardware.
Claim(s) 1-9 and 18-20 are directed to a system, method, or product, which are/is one of the statutory categories of invention. Claims 10-17 do not fall within a statutory category as described above. However, these claims will still be analyzed. (Step 1: YES for claims 1-9 and 18-20. NO for claims 10-17).
The Examiner has identified independent system claim 10 as the claim that represents the claimed invention for analysis and is similar to independent Claims 1 and 18. Claim 10 recites the following limitations:
[a computer network comprising: one or more collateral databases including a plurality of collateral portfolios for a plurality of users;]
[a secured lending benefit analysis tool having access to the one or more collateral databases, the secured lending benefit analysis tool configured to:]
receive a user input [from a machine being accessed by one of the plurality of users];
based on the user input, simulate a first portfolio growth scenario based on liquidating a predetermined value of one of the collateral portfolios;
based on the user input, simulate a second portfolio growth scenario based on obtaining a loan of the predetermined value, the loan secured by collateral of the collateral portfolio;
generate a portfolio growth simulation based on the first portfolio growth scenario and the second portfolio growth scenario; and
display, [on the machine,] the portfolio growth simulation.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity because the limitations recite fundamental economic principles or practices. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic principle or practice, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. The computer network, secured lending benefit analysis tool, and machine in Claim 10 are just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. Claim(s) 1 and 18 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of a computer network, a secured lending benefit analysis tool, and a machine. The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, claim(s) 1, 10, and 18 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using computer hardware 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. Accordingly, these additional elements do not change the outcome of the analysis when considered separately and as an ordered combination. Thus, claim(s) 1, 10, and 18 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 2-9, 11-17 and 19-20 further define the abstract idea that is present in their respective independent claim(s) 1, 10, and 18 and thus correspond to certain methods of organizing human activity and hence are abstract for the reasons presented above. Dependent claims 2-9, 11-17 and 19-20 do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, dependent claims 2-9, 11-17 and 19-20 are directed to an abstract idea. Thus, claim(s) 1-20 are not patent-eligible.
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.
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 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 factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 non-obviousness.
Claims 1-6, 10-14, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Krishnan (US 2022/0138858) in view of Walsh (US 2019/0130506).
Regarding claim(s) 1, 10, and 18:
Krishnan teaches:
secured lending benefit analysis tool comprising: one or more collateral databases including a valuation of a collateral portfolio of a user; (Krishnan: pgh 6, “The operations may further include: assigning multiple tags, respectively, to multiple portfolio line items in the portfolio data…”)
a processor coupled to the one or more collateral databases, the processor configured to: (Krishnan: pgh 5, “In general, in one aspect, one or more non-transitory computer-readable media store instructions that, when executed by one or more processors…”)
simulate a first portfolio growth scenario based on liquidating a predetermined value of the collateral portfolio; (Krishnan: pgh 77, “…the “Notional All Use (USD)” metric is selected, and eight uses (of collateral/”liability”), corresponding to a horizontal axis, are shown: firm short; index short; loan vs. cash; loan vs. noncash; pending sell; repo; sell; and swap short. In an embodiment, the system is configured to combine source categories (vertical axis) and use categories (horizontal axis) to generate a matrix display in a pivot table format. Each row, column, and/or cell may be calculated for any key metric(s) selected. Thus, the system may be configured to respond to user input to analyze a client’s book and provide insights at a detailed, granular level.”)
simulate a second portfolio growth scenario based on obtaining a loan of the predetermined value, the loan secured by collateral of the collateral portfolio; (Krishnan: pgh 86, “The system may tag each portfolio line item according to a unique type of source or use activity (e.g., borrow vs. cash, borrow vs. noncash, loan vs. cash or noncash, repo, etc.).”)
valuating a collateral portfolio of a user; (Krishnan: pgh 76, “,,,a company’s book may be broken down into source and use categories. In an example GUI 600 illustrated in Fig. 6, the “Notional All sources (USD)” metric is selected, and seven sources 602 (of collateral/”assets”), corresponding to a vertical axis, are shown: borrow vs. cash; borrow vs. noncash; buy; firm long; index long; pending buy; and reverse repo.”)
Krishnan does not teach, however, Walsh teaches:
generate a portfolio growth simulation based on the first portfolio growth scenario and the second portfolio growth scenario; and (Walsh: pgh 106, “…there is shown an embodiment of a system which is adapted for usein generating ‘what-if’ scenarios for projecting investment fund gains…In this embodiment, the system provides for Graphical User Interface for Scenario Simulator 2000…The user then clicks on Scenario Generator Icon 2600 which initiates the generation of Investment Simulation Output…”)
display the portfolio growth simulation to the user. (Walsh: Fig. 4 shows a graphical user interface that displays the portfolio growth simulation to the user.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Krishnan to include the teachings of Walsh because “…the need exists for an apparatus, system and method to allow for the real-time valuation, revaluation and/or monetization of the portion of the principal and interest of such a loan which has already been repaid to a lender, and thus takes into account and allows for the actual current value of the unencumbered portion of the collateralized goods to be utilized or otherwise benefitted from prior to the repayment of the entirety of the principal and interest.” (Walsh: pgh 6).
Regarding claim(s) 2 and 19:
The combination of Krishnan/Walsh, as shown in the rejection above, discloses the limitations of claims 1 and 18, respectively. Krishnan further teaches:
wherein the steps of the processor are performed in response to a user input. (Krishnan: pgh 5, “…and responsive to the user input, updating the ABCM analysis to reflect the decision to execute the transaction.”)
Regarding claim(s) 3 and 11:
The combination of Krishnan/Walsh, as shown in the rejection above, discloses the limitations of claims 2 and 10, respectively. Krishnan further teaches:
wherein the user input is an indication that the user wishes to liquidate the predetermined value of the collateral portfolio. (Krishnan: pgh 74, “Responsive to user input, the system may submit one or more transaction to a trading queue.”; pgh 77, “…corresponding to a horizontal axis are shown: firm short; index short; loan vs. cash; loan vs. noncash; pending sell; repo; sell; and swap short…Thus, the system may be configured to respond to user input to analyze a client’s book…”)
Regarding claim(s) 4 and 12:
The combination of Krishnan/Walsh, as shown in the rejection above, discloses the limitations of claims 1 and 10, respectively. Walsh further teaches:
the processor further configured to display a preferred growth scenario to the user. (Walsh: pgh 140, “The AWL Management Module may allow borrowers to create multiple what-if scenarios with multiple combinations of products to visually show how the AWL may perform under user-defined scenarios..”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Krishnan to include the teachings of Walsh because “…the need exists for an apparatus, system and method to allow for the real-time valuation, revaluation and/or monetization of the portion of the principal and interest of such a loan which has already been repaid to a lender, and thus takes into account and allows for the actual current value of the unencumbered portion of the collateralized goods to be utilized or otherwise benefitted from prior to the repayment of the entirety of the principal and interest.” (Walsh: pgh 6).
Regarding claim(s) 5, 13, and 20:
The combination of Krishnan/Walsh, as shown in the rejection above, discloses the limitations of claims 1, 10, and 18, respectively. Walsh further teaches:
wherein the first portfolio growth scenario and the second portfolio growth scenario are simulated over a predetermined time period. (Walsh: pgh 141, “The AWL Management Module may also combine projected future performance to complete the analysis of thirty years of compounding growth.”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Krishnan to include the teachings of Walsh because “…the need exists for an apparatus, system and method to allow for the real-time valuation, revaluation and/or monetization of the portion of the principal and interest of such a loan which has already been repaid to a lender, and thus takes into account and allows for the actual current value of the unencumbered portion of the collateralized goods to be utilized or otherwise benefitted from prior to the repayment of the entirety of the principal and interest.” (Walsh: pgh 6).
Regarding claim(s) 6 and 14:
The combination of Krishnan/Walsh, as shown in the rejection above, discloses the limitations of claims 5 and 13, respectively. Walsh further teaches:
wherein the processor is further configured to simulate the first portfolio growth scenario and the second portfolio growth scenario at a plurality of time intervals within the predetermined time period. (Walsh: pghs 20-22, “Fig. 2 illustrates an embodiment of a scenario simulator; Fig. 3 illustrates an embodiment of another scenario simulator; Fig. 4 illustrates an embodiment of another scenario simulator”. The scenario simulator graphs show portfolio growth scenarios at a plurality of time intervals within the predetermined time period.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Krishnan to include the teachings of Walsh because “…the need exists for an apparatus, system and method to allow for the real-time valuation, revaluation and/or monetization of the portion of the principal and interest of such a loan which has already been repaid to a lender, and thus takes into account and allows for the actual current value of the unencumbered portion of the collateralized goods to be utilized or otherwise benefitted from prior to the repayment of the entirety of the principal and interest.” (Walsh: pgh 6).
Claims 7-9 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Krishnan/Walsh in view of Graff (US 7,203,661).
Regarding claim(s) 7 and 15:
The combination of Krishnan/Walsh, as shown in the rejection above, discloses the limitations of claims 1 and 10, respectively. Graff further teaches:
wherein simulating the first portfolio growth scenario includes projecting a tax on the predetermined value of the collateral portfolio. (Graff: col 19, lines 20-30, “To project the after-tax cash flows of the estate for years investor, and hence this investor’s projected after-tax income rate, the Logic Means also uses the projected tax bracket schedule of the estate for years investor as Input Data.”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Krishnan/Walsh to include the teachings of Graff because there is a need to accurately value property rights (Graff: col 2, lines 50-65).
Regarding claim(s) 8 and 16:
The combination of Krishnan/Walsh/Graff, as shown in the rejection above, discloses the limitations of claims 7 and 15, respectively. Walsh further teaches:
wherein simulating the first portfolio growth scenario further includes calculating a first future value based on a remaining value of the collateral portfolio and an investment rate of return. (Walsh: pgh 106, “…the system provides for Graphical User Interface for Scenario Simulator…in which a user enters a name of the particular scenario…an Investment Growth Rate…The user then clicks on Scenario Generator Icon which initiates the generation of Investment Simulation Output…”; pgh 107, “…the borrower may accumulate an additional Net Gain on investments purchased with the First Investment Loan of $413,000, as indicated at 2730 after the original $400,000…”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Krishnan/Graff to include the teachings of Walsh because “…the need exists for an apparatus, system and method to allow for the real-time valuation, revaluation and/or monetization of the portion of the principal and interest of such a loan which has already been repaid to a lender, and thus takes into account and allows for the actual current value of the unencumbered portion of the collateralized goods to be utilized or otherwise benefitted from prior to the repayment of the entirety of the principal and interest.” (Walsh: pgh 6).
Regarding claim(s) 9 and 17:
The combination of Krishnan/Walsh/Graff, as shown in the rejection above, discloses the limitations of claims 8 and 16, respectively. Walsh further teaches:
wherein simulating the second portfolio growth scenario further includes calculating a second future value based on the predetermined value of the collateral portfolio and the investment rate of return. (Walsh: pgh 112, “…there is shown an embodiment of a system which is adapted for use in generating ‘what-if’ scenarios for projecting Investment Fund Gains from investments made with a First Collateralized Loan…”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Krishnan/Graff to include the teachings of Walsh because “…the need exists for an apparatus, system and method to allow for the real-time valuation, revaluation and/or monetization of the portion of the principal and interest of such a loan which has already been repaid to a lender, and thus takes into account and allows for the actual current value of the unencumbered portion of the collateralized goods to be utilized or otherwise benefitted from prior to the repayment of the entirety of the principal and interest.” (Walsh: pgh 6).
Conclusion
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. Wang (US 2015/0287140) discloses systems and methods for collateral management.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN O PRESTON whose telephone number is (571)270-3918. The examiner can normally be reached 9:00 am - 5:00 pm.
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, MICHAEL ANDERSON can be reached on 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN O PRESTON/Examiner, Art Unit 3698
June 17, 2026
/ELIZABETH H ROSEN/Primary Examiner, Art Unit 3693
Prosecution Insights