Ex Parte ManningDownload PDFBoard of Patent Appeals and InterferencesAug 23, 201010284663 (B.P.A.I. Aug. 23, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/284,663 10/31/2002 Kathleen E. Manning P02,0474 1347 26574 7590 08/24/2010 SCHIFF HARDIN, LLP PATENT DEPARTMENT 233 S. Wacker Drive-Suite 6600 CHICAGO, IL 60606-6473 EXAMINER KANERVO, VIRPI H ART UNIT PAPER NUMBER 3691 MAIL DATE DELIVERY MODE 08/24/2010 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KATHLEEN E. MANNING ____________ Appeal 2009-013274 Application 10/284,663 Technology Center 3600 ____________ Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R. MOHANTY, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-013274 Application 10/284,663 2 STATEMENT OF THE CASE This is an appeal from the final rejection of claims 34-40. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002). The claimed invention is directed to systems and methods for performing financial modeling and analyzing structure for forecasting, projecting, modeling, and simulating potential cash flows through the accumulation and distribution process and multiple time periods (Spec. 1). Claim 34, reproduced below, is further illustrative of the claimed subject matter. 34. A method for computerized investment planning and analysis for a user, comprising the steps of: providing with a computer to the user options for determining a retirement payout scenario for the user upon retirement, and also providing a selection of models for the user to select from for said determined retirement payout scenario, at least one of said models including at least one user selected rate of return which is based upon at least one user selected historical period for at least one investment; providing as input data to the computer substantially all relevant retirement capital accumulations of the user including benefit plans, account and investment information of the user, said determined retirement payout scenario, said at least one user selected model, and at least one user selected variable for the model including said selected rate of return; with the computer, modeling at least the user's capital accumulations by applying the at least one user selected variable, said modeling including modeling of a future economic period based on repeating a pattern of historical economic data from said user selected historical period, said modeling of the future economic period showing grouping and timing effects of favorable and non-favorable investment events Appeal 2009-013274 Application 10/284,663 3 depicting a potential for depletion of assets comprising a capital ruin or a sufficiency of assets to provide income after retirement; with the computer also modeling post-retirement distribution of the capital accumulations, and establishing a strategy by providing an option to purchase an annuity to the user upon the capital accumulations reaching a threshold during a distribution; and with the computer providing investment planning and analysis output data based on said retirement scenario determined by the user and comprising investment results to the user based on said input data and at least one of said models selected by the user, and including an outcome of said modeling of substantially all of said user's capital accumulations and benefit plans including a total capital accumulation at a projected retirement date selected by the user, said output data providing investment results for each of a plurality of time periods before and after said retirement date so that the user can observe effects of said input data, including the at least one selected model, on the investment results in each of said time periods, and also including total investment results for observation by the user over all of said time periods. The references of record relied upon by the Examiner as evidence of obviousness are: Crapo US 5,987,433 Nov. 16, 1999 O’Shaughnessy US 6,484,151 B1 Nov. 19, 2002 Hueler US 2003/0004844 A1 Jan. 2, 2003 Flanery US 2003/0139992 A1 Jul. 24, 2003 Claims 34-38 and 40 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Crapo in view of O’Shaughnessy and Hueler; and claim 39 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Crapo in view of O’Shaughnessy, Hueler, and Flanery. We AFFIRM. Appeal 2009-013274 Application 10/284,663 4 ISSUE Did the Examiner err in asserting that a combination of Crapo, O’Shaughnessy, Hueler, and Flannery render obvious the subject matter of claims 34-40? FINDINGS OF FACT We adopt the Examiner’s Findings of Fact concerning Arguments I, II, and IV, as set forth on pages 9-11 and 14-15 of the Examiner’s Answer. ANALYSIS We are not persuaded that the Examiner erred in asserting that a combination of Crapo, O’Shaughnessy, Hueler, and Flannery render obvious the subject matter claims 34-40 (App. Br. 6-12; Reply Br. 1-3). Appellant asserts that there is no disclosure of the total capital accumulation at a projected retirement date selected by a user, as recited in independent claim 34 (App. Br. 7; Reply Br. 2). However, Crapo is directed to meeting financial objectives, which “is characterized by an event having a financial amount and a future time when the financial amount is expected to be needed” (col. 2, ll. 16-18). Retirement is a contemplated financial objective (col. 3, ll. 20-29; col. 10, ll. 50-54, 64-66). Thus, the “financial amount” in Crapo corresponds to the recited “total capital accumulation,” and the “future time” with retirement being contemplated in Crapo corresponds to the recited “projected retirement date.” The annual pre-tax income recited in Appeal 2009-013274 Application 10/284,663 5 columns 3 and 10 of Crapo is one aspect of retirement, but not the only aspect, as an annual pre-tax income still requires a total capital accumulation goal. Appellant also asserts that Crapo does not disclose output data providing investment results for each of a plurality of time periods before and after said retirement date so that the user can observe effects of said input data, including the at least one selected model, on the investment results in each of said time periods, and also including total investment results for observation by the user over all of said time periods[,] as recited in independent claim 34 (App. Br. 7-8; Reply Br. 2). However, Crapo discloses treating pre- and post-retirement savings separately (col. 10, ll. 64-66), which correspond to the recited “plurality of time periods before and after said retirement date.” By treating the two time periods separately, the investment models and results for each will differ, but can still be viewed together in an overall portfolio view. Appellant further asserts that a combination of O'Shaughnessy and Crapo does not render obvious determining a retirement payout scenario for the user upon retirement, and also providing a selection of models for the user to select from for said determined retirement payout scenario, at least one of said models including at least one user selected rate of return which is based upon at least one user selected historical period[,] as recited in independent claim 34 (App. Br. 8; Reply Br. 2-3). Appellant asserts that O’Shaughnessy only discloses strategies and models for stock selection, and not retirement planning, but Crapo is cited by the Examiner as disclosing retirement planning; O’Shaughnessy is only cited for disclosing certain historical models for investments that could be incorporated into the Appeal 2009-013274 Application 10/284,663 6 retirement planning models of Crapo (col. 3, ll. 6-12). See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references). Appellant asserts there is no rationale for combining the historical models of O’Shaughnessy with the retirement models of Crapo (App. Br. 9- 11). However, the Examiner has set forth the following rationale for combining: It would have been obvious to one of ordinary skill in the art at the time of the invention to have modified the method and system of Crapo by providing selection of models for the user to select from, at least one user selected historical period, and modeling of a future economic period based on repeating a pattern of historical economic data of O'Shaughnessy in order to allow a user to select strategies (O'Shaughnessy: col. 2, lines 63-64). (Exam’r’s Ans. 6). We agree. Crapo analyzes inputted financial information using historical database 14, which contains information pertaining to rates of return (col. 3, ll. 8-35). O’Shaughnessy discloses that a user may want to select different historical strategies having different rates of return. Appellant asserts that the combination of O'Shaughnessy, Crapo, and Hueler does not render obvious “with the computer also modeling post- retirement distribution of the capital accumulations, and establishing a strategy by providing an option to purchase an annuity to the user upon the capital accumulations reaching a threshold during a distribution” as recited in independent claim 34 (App. Br. 11-12; Reply Br. 3). Appellant assert that while Hueler may disclose purchasing annuities, the combination of Appeal 2009-013274 Application 10/284,663 7 references does not disclose purchasing annuities “upon the capital accumulations reaching a threshold during a distribution.” However, under a broadest reasonable interpretation, independent claim 34 only recites that the option to purchase annuities is provided when the threshold is reached. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Independent claim 34 does not recite that the annuity actually needs to be purchased when the threshold is reached, as seemingly argued by Appellant. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005). This is supported by the Specification at page 17, lines 8-16, which discloses that “[t]he annuity purchase is an option at any time for the investor,” and only that a threshold level is provided where “the life annuity should be purchased” (emphasis added), again emphasizing its optional nature. Thus, as the combination of references including Hueler provides the option to purchase annuities at any time, which includes when the threshold is reached, the limitation is satisfied. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2007). AFFIRMED Appeal 2009-013274 Application 10/284,663 8 hh SCHIFF HARDIN, LLP PATENT DEPARTMENT 233 S. 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