Ex Parte Huang

Patent Trial and Appeal Board

Sep 24, 2018

12939929 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/939,929 11/04/2010
61834 7590
Meister Seelig & Fein LLP
125 Park Avenue
7th Floor
NEW YORK, NY 10017
09/26/2018
FIRST NAMED INVENTOR
Dylan W. Huang
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
6153-043 6418
EXAMINER
MERCHANT, SHAHID R
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
09/26/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@msf-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DYLAN W. HUANG
Appeal2017-008241
Application 12/939 ,929 1
Technology Center 3600
Before MARC S. HOFF, MAHSHID D. SAADAT, and JENNIFER S.
BISK, Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1--4, 6-13, 15-19, 21, and 23-25. 2 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellants' invention is a computerized method and system for
allocating assets among a plurality of financial products for an investor
portfolio. A solution space of financial vehicle combinations is calculated by
1 The real party in interest is New York Life Insurance Company.
2 Claims 5, 14, 20, and 22 have been cancelled.
Appeal2017-008241
Application 12/939,929
generating a set of simulations, for each of the combinations, of the value of
the financial vehicle combination. The solution space is partitioned based on
investor-specific information including a retirement objective. A set of
financial vehicle combinations is selected, and assets are allocated among
the plurality of financial products based on the set of selected financial
vehicle combinations and received investor-specific information. See
Abstract; Spec. ,r 12.
Claim 1 is reproduced below:
1. A computerized method for optimizing a set of program
parameter values associated with a plurality of financial
products for an investor portfolio, comprising:
executing, via a computing device, investment vehicle
allocation software to construct combinations of a plurality of
different types of financial vehicles and assign a plurality of
different allocations to each of the different types of financial
vehicles in each combination as computational elements for
modeling a computer program product;
communicating, via the computing device, the constructed
combinations with the plurality of different allocations to
simulation software;
generating, via the computing device executing the simulation
software, a solution space data structure of financial vehicle
combinations within the computer program product by
simulating scenarios with the constructed combinations with the
plurality of different allocations to generate legacy benefit,
liquid asset, and probability of ruin values for each of the
financial
vehicle combinations;
receiving, via the computing device, investor-specific
information as input into the computer program product, the
investor-specific information including a retirement objective
selected from a plurality of retirement objectives on a scale that
ranges from maximum income security and maximum legacy
potential, the investor-specific information received from one or
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more client devices communicatively coupled to the computing
device over a network;
partitioning, via the computing device, the solution space data
structure into a plurality of sections for the plurality of
retirement objectives based on the legacy benefit, liquid asset,
and
probability of ruin values, and probability of ruin thresholds
corresponding to risk associated with depleting liquid assets
beyond life expectancy from the plurality of different
allocations to generate a given legacy or liquidity benefit
appropriate for each of the plurality of retirement objectives;
identifying, via the computing device, a subset of financial
vehicle combinations from each of the plurality of sections
based on the investor-specific information including an optimal
set of financial vehicle combinations for the plurality of
retirement objectives;
selecting, via the computing device, a financial vehicle
combination from a range of financial vehicle combinations
within the identified subset of financial vehicle combinations
with a highest legacy benefit or liquid asset value for a given
probability of ruin from one of the plurality of sections that
corresponds to the selected retirement objective; and
transmitting, via the computing device, an output from the
computer program product including data to one or more
financial operation servers, the data including instructions to
allocate assets based on the selected financial vehicle
combination.
Claims 1--4, 6-13, 15-19, 21, and 23-25 stand rejected under 35
U.S.C. § 101 as being drawn to patent-ineligible subject matter.
Throughout this decision, we make reference to the Appeal Brief
("App. Br.," filed January 6, 2017), the Reply Brief ("Reply Br.," filed May
11, 2017), and the Examiner's Answer ("Ans.," mailed March 29, 2017) for
their respective details.
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Application 12/939,929
ISSUES
1. Does Appellants' claimed invention recite an abstract idea?
2. Do the elements of Appellants' claimed invention, considered
individually and as an ordered combination, recite significantly more than an
abstract idea so as to transform the nature of the claim into a patent-eligible
application?
PRINCIPLES OF LAW
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
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Application 12/939,929
Cir. 2017). Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78).
ANALYSIS
Independent claim 1 recites a computerized method for optimizing a
set of program parameter values associated with a plurality of financial
products for an investor portfolio. Independent claim 12 recites a computer
system that executes a series of steps. Independent claim 21 recites a
computerized method. Each of the independent claims recites similar
limitations, and Appellants argue the claims as a single group.
ALICE STEP 2A - ABSTRACT IDEA
Appellants argue that the claimed invention is not directed to the
abstract idea of "determining and then allocating to financial vehicles based
on some financial objective and generically processing it on a computing
device," as found by the Examiner. App. Br. 7. Appellants contend that the
Examiner overlooked technical features recited in the claims. App. Br. 8.
Appellants assert that "the claims recite meaningful requirements for
modifying a data structure in a computer program product in accordance
with data creation by executing simulation software," which allegedly
allows for a technological improvement. App. Br. 11.
We are not persuaded by Appellants' argument. The disclosed and
claimed invention is clearly directed to receiving one or more financial
objectives from an investor, determining and allocating to financial vehicles
based on those objectives, and generically processing a plurality of possible
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Appeal2017-008241
Application 12/939,929
outcomes on a computing device in order to determine the optimal financial
vehicle combination for said investor.
We find that Appellants' invention is concerned with the fundamental
economic practice of investment asset allocation. Such asset allocation has
been performed manually for many years, and Appellants propose to adapt it
to simulation on a computer. The financial decision making process
embodied in the claims does not recite a specific asserted improvement in
computer capabilities. Rather, the claimed process recites an abstract idea
for which computer are invoked merely as a tool. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1332 (Fed. Cir. 2016). We agree with the
Examiner's finding that the claims recite an abstract idea.
ALICE STEP 2B - INVENTIVE CONCEPT
Having determined that the claimed invention is directed to a judicial
exception, i.e. an abstract idea, we next inquire whether the elements of the
claims, considered individually and as an ordered combination, recite
significantly more such that the additional elements transform the nature of
the claim into a patent-eligible application. Alice, 134 S. Ct. at 2355.
Appellants argue that the Examiner has not sufficiently analyzed the
claims to conclude that the invention under appeal "does not 'solve a
computer technology problem' and that 'there is no improvement to any
computer technology."' App. Br. 14, quoting Final Act. 9.
Appellants allege that the additional steps of the claimed invention
"specifically relate to data partitioning schemes correlated to a solution
space data structure generated by simulation software. The solution space
data structure is logically partitioned into segments to improve data
operation performance. A partitioning scheme is important for systems that
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Application 12/939,929
generate a large volume of data .... Partitioning the large volume of data
improves data access operations such that the operations take place over
smaller volumes of data. By limiting the amount of data to operate on,
partitioning provides a performance benefit to a computer system that
accesses data items from the partitions." App. Br. 15.
In the "Summary of Claimed Subject Matter," Appellants identify
paragraphs 12, 29, and 40-41 of the Specification as support for the claim
limitation "partitioning, via the computing device, the solution space data
structure into a plurality of sections for the plurality of retirement
objectives." App. Br. 3, 4, 6.
Paragraph 12 discloses generating frontier lines based on the selected
set of financial vehicle combinations and partitioning the frontier
representation based on the number of retirement objectives available to the
investor. "In some embodiments, the step of partitioning the frontier
representation follows by the selection of a financial vehicle combination
within each of the partitions of the frontier representation." Paragraph 29
concerns accomplishment of goals for recommending optimal financial
allocation, and makes no explicit mention of partitioning. Paragraph 40
concerns the creation of "frontier lines" that divide the potential returns
according to different retirement objectives. Paragraph 41 provides an
example for a hypothetical investor, and discloses that "[t]he five partitions
702-707, ranging from Maximum Income Security to Maximum Legacy
Potential, are separated by the dotted lines and are evenly split among the
probability of ruin. Each of the partitions corresponds to the five retirement
objectives received in step 102 in FIG. 1."
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Appellants' Figure 7 is reproduced below:
~ '!, :s:}"S.~::<:
8
"' G'· i I;;,-:;.;,,,:,
...,
FIG,7
Figure 7 illustrates an embodiment for searching a solution space and
presenting recommendations to facilitate a method for allocation of assets
and products.
Appellants' Specification makes clear that the partitioning that is
performed in the invention is done to delineate the risk-reward choices that
are before the investor. Independent claim 1, for example, makes explicit
that partitioning separates the "solution space" into "a plurality of sections
for the plurality of retirement objectives based on the legacy benefit, liquid
asset, and probability of ruin values." Contrary to Appellants' assertion in
the Appeal Brief, no technological benefit to partitioning the solution space
is disclosed or claimed.
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Application 12/939,929
Appellants also attempt to analogize the invention under appeal to the
invention in BASCOM. 3 The court found that the "installation of a filtering
tool at a specific location, remote from the end-users, with customizable
filtering features specific to each end user," gave the filtering tool "both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
server." BASCOM, 827 F.3d at 1350. The court found that the claimed
invention recited "a specific, discrete implementation of the abstract idea of
filtering content," despite the recitation of "generic computer, network, and
Internet components." Id. at 1349-50 .
We do not agree with Appellants that the invention under appeal
presents analogous issues. Unlike the invention in BASCOM, Appellants'
invention does not recite a specific, discrete implementation of the abstract
idea of determining and then allocating to financial vehicles based on some
financial objective. Appellants' invention does not recite a non-conventional
and non-generic arrangement of known, conventional pieces. We are not
persuaded by Appellants' contention that a technical improvement in the
computer processing of financial planning is recited in the claims. Contrary
to Appellants' argument, the Specification states that partitioning is done for
the purpose of presenting investment allocation alternatives to a client, rather
than for the purpose of "improving data operation performance." Therefore,
we find that Appellants' claimed invention does not recite significantly more
to transform the nature of the claim into a patent-eligible application of an
abstract idea.
3 BASCOM Glob. Internet Servs. v. AT&T Mobility, LLC, 827 F.3d 1341
(Fed. Cir. 2016).
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Application 12/939,929
We find that the Examiner did not err in rejecting the claims as patent-
ineligible under§ 101. We sustain the Examiner's rejection of claims 1--4,
6-13, 15-19, 21, and 23-25.
CONCLUSIONS
1. Appellants' claimed invention recites an abstract idea.
2. The elements of Appellants' claimed invention, considered
individually and as an ordered combination, do not recite significantly more
than an abstract idea so as to transform the nature of the claim into a patent-
eligible application.
ORDER
The Examiner's decision to reject claims 1--4, 6-13, 15-19, 21, and
23-25 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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