Ex Parte Manning

Board of Patent Appeals and Interferences

Aug 23, 2010

10284663 (B.P.A.I. Aug. 23, 2010)

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.

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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
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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.
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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
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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
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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
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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
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Application 10/284,663

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SCHIFF HARDIN, LLP
PATENT DEPARTMENT
233 S. Wacker Drive-Suite 6600
CHICAGO, IL 60606-6473