Optimal Asset Management

Patent Trials and Appeals Board

Feb 17, 2021

2020006090 (P.T.A.B. Feb. 17, 2021)

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.
14/716,843 05/19/2015 Vijay Vaidyanathan OAM-002 2136
138718 7590 02/17/2021
Polsinelli LLP
3 Embarcadero Center
Suite 2400
San Francisco, CA 94111
EXAMINER
FU, HAO
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
02/17/2021 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):
sfpatent@polsinelli.com
uspt@polsinelli.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VIJAY VAIDYANATHAN,
HIMANSHU MONTY JOSHI, DANIEL MANTILLA GARCIA,
ANDREW ANG, and HELMUT HISSEN

Appeal 2020-006090
Application 14/716,843
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
TAWEN CHANG, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims as lacking patent ineligibility under
35 U.S.C. § 101. Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from
the Examiner’s decision to reject the claims. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Optimal Asset
Management. Appeal Br. 3.
Appeal 2020-006090
Application 14/716,843

2
STATEMENT OF THE CASE
The Examiner rejected claims 1, 3, 6–8, 10, and 22–26 under 35
U.S.C § 101 in the Final Office Action (“Final Act.) “because the claimed
invention is directed to non-statutory subject matter.” Final Act. 5.
There are two independent claims on appeal, claims 1 and 26. Claim 1
is directed to a computer-implemented method; claim 26 is directed to a
“non-transitory, computer-readable storage medium having embodied
thereon instructions executable by a processor to perform a method”
comprising substantially the same steps recited in claim 1. Claim 1 is
representative and reproduced below, annotated with bracketed numbers for
reference to the limitations recited in the claim:
1. A computer-implemented method for constructing a
completion portfolio for an existing portfolio, the method
comprising:
[1] storing a plurality of factor portfolios in memory of a
server, wherein each stored factor portfolio corresponds to a
different predefined factor blend;
[2] receiving an uploaded existing portfolio from a user
device via a graphical user interface, wherein the graphical user
interface displays graphical representation of the set of factors;
[3] identifying a set of factors that are common across the
historical return series;
[4] constructing a long-short factor return series based on
an uploaded historical return series of the existing portfolio at
the server, wherein the historical return series is a set of data
associated with past performance of equities in the existing
portfolio;
[5] performing at least one factor coefficient for each
equity within the existing portfolio based on an analysis that
compares the existing portfolio to the long-short factor return
series, wherein the factor coefficient includes either a positive
sign or a negative sign;
[6] displaying results of the analysis on the graphical user
interface;
Appeal 2020-006090
Application 14/716,843

3
[7] synthesizing the existing portfolio based on a set of at
least one of the stored factor portfolios selected for each equity
corresponding to the positive or negative sign of the factor
coefficient, wherein each of the selected factor portfolios is
assigned a weight within the synthesized portfolio;
[8] receiving via the graphical user interface a selected
subset of factors from the set of factors that are common across
the historical return series;
[9] determining a target factor portfolio based on the
selected subset of factors that replicates at least one of the
selected subset of factors of the existing portfolio, wherein
determining the target factor portfolio includes iterating through
a plurality of candidate target factor portfolios until at least one
of the selected subset of factors of the existing portfolio is
found;
[10] comparing the determined target factor portfolio to
the selected subset of factors of the existing portfolio to
determine a difference between a factor allocation of the target
factor portfolio and the selected subset of factors of the existing
portfolio;
[11] identifying a plurality of additional factors and
factor weights that are missing from the existing portfolio and
required to transform the existing portfolio into the determined
target factor portfolio;
[12] constructing the completion portfolio that includes
the additional factors and factor weights missing from the
existing portfolio and displaying the completion portfolio on a
graphical user interface; and
[13] generating allocation instructions for executing the
completion portfolio, wherein the generated allocation
instructions specifies investing a determined amount of
resources in the completion portfolio, and wherein completion
portfolio transforms the existing portfolio into the determined
target factor portfolio.

Appeal Br. 21 (Claims App.).

Appeal 2020-006090
Application 14/716,843

4
PATENT ELIGIBILITY
Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If
it is determined that the claims are directed to an ineligible concept, then the
second step of the two-part analysis is applied in which it is asked “[w]hat
else is there in the claims before us?” Id. (alteration in original) (citation and
quotation marks omitted). The Court explained that this step involves
a search for an “‘inventive concept’”—i.e., an element or
combination of elements that is “sufficient to ensure that the
patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.”
Alice, 573 U.S. at 217–18 (alteration in original) (citing from Mayo, 566
U.S. at 75–77).
Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
Appeal 2020-006090
Application 14/716,843

5
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217
(citation omitted).
The PTO published revised guidance on the application of 35 U.S.C.
§ 101, USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Eligibility Guidance”) (we cite to the Federal Register where the 2019
Eligibility Guidance was published). This guidance provides additional
direction on how to implement the two-part analysis of Mayo and Alice.
Step 2A, Prong One, of the 2019 Eligibility Guidance, looks at the
specific limitations in the claim to determine whether the claim recites a
judicial exception to patent eligibility. In Step 2A, Prong Two, the claims are
examined to identify whether there are additional elements in the claims that
integrate the exception in a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” 84 Fed.
Reg. 54 (Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
2019 Eligibility Guidance instructs us to determine whether there is a
claimed “inventive concept” to ensure that the claims define an invention
that is significantly more than the ineligible concept itself. 84 Fed. Reg. 56.
With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.

Appeal 2020-006090
Application 14/716,843

6
Discussion
Claim 1 is directed to a method, which is a “process” and one of the
broad statutory categories of patent-eligible subject matter under 35 U.S.C.
§ 101. Therefore, following the first step of the Mayo/Alice analysis, we find
that the claim is directed to a statutory class of invention. We thus proceed to
Step 2A, Prong One, of the Eligibility Guidance.

Step 2A, Prong One
In Step 2A, Prong One, of the 2019 Eligibility Guidance, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, namely, whether the claim recites an
abstract idea, law of nature, or natural phenomenon. The 2019 Eligibility
Guidance directs examiners to search each limitation in the claim to
determine whether it recites abstract an abstract idea. 84 Fed. Reg. 54.
Claim 1 is directed to a computer-implemented method for
constructing a completion portfolio from an existing portfolio. A completion
portfolio is a portfolio of funds, stocks, equities, etc., built from an existing
portfolio of a user “based on desired overall factor exposures that
complement the existing fund or funds, to achieve the desired overall factor
exposure result.” Spec. ¶7.
The claim recites a series of steps in which a completion portfolio is
constructed from an existing portfolio based on a desired blend of factors.
Spec. ¶ 4. The “factors” are not recited in the claim, but the Specification
identifies them as value, quality, momentum, low-volatility, and illiquidity.
Spec. ¶¶ 62–67. Examiner found that claim 1 comprises steps which can be
performed in the human mind and therefore found that the claim recites
Appeal 2020-006090
Application 14/716,843

7
“mental processes,” one of the groupings of abstract ideas listed in the 2019
Eligibility Guidance. Final Act. 3. Examiner also found that claim is directed
to constructing a portfolio of equities, which is a “method of organizing
human activity,” another grouping of abstract ideas identified in the 2019
Eligibility Guidance. Id.
Appellant argues that a human mind “is simply not equipped to
perform the claimed steps as recited.” Appeal Br. 11. Appellant, however,
did not explain why certain steps in the claim could not be performed in the
human mind with the aid of paper and pen. Harlow,2 cited by Examiner in an
obviousness rejection subsequently withdrawn,3 states that, in managing an
investment portfolio, “a decision maker (e.g., a portfolio manager, trader, or
other investor)” is required “to evaluate risk associated with a portfolio
containing assets from a variety of asset classes.” Harlow ¶ 2. Therefore,
while portfolio management may use utilize a computer to perform
computations, or be a completely computer-implemented method as here, it
is evident that at least some of the steps historically were performed
mentally by a “decision maker” with the aid of pen and paper.
For example, a human could, with the help of paper and pen: identify
factors that are common across historical returns by inspecting the available
data for the returns (step 3), select equities based on the identified factors,
including long and short factor equities (steps 4, 7, and 9), make
comparisons between the target and existing portfolio and identify missing
factors and factor weights (steps 10, 11), and construct a completion
portfolio that include the missing factors and factor weights (step 12). These

2 Harlow et al., US 2005/0108134 A1, published May 19, 2005 (“Harlow”).
3 Final Office Action, mailed May 23, 2018.
Appeal 2020-006090
Application 14/716,843

8
steps involve evaluations and judgments that a human ordinary performs in
the mind (see 84 Fed. Reg. 52 under “Mental processes”). Examiner
therefore properly characterized the claim as reciting the abstract idea of
mental processes. Appellant has not persuasively identified anything recited
in these steps that would preclude a human from performing them.
Appellant argues that the claim “specifically recite[s] uploading user-
specific information via graphical-based tools and applying step-by-step
automated analyses that are not necessary or relevant to human-performed
processes, whether mental or not.” Appeal Br. 15. Appellant states that the
“vast majority of the analytical steps are specifically programmed precisely
because a computer lacks the human mental ability to subjectively assess
portfolios and make decisions.” Id.
This argument is not persuasive. As discussed above, a completion
portfolio could be constructed by a human, performing the steps identified
above, in the human’s mind with the aid of pen and paper. While a computer
may be more accurate and objective, the claim does not require any degree
of accuracy. “Courts have examined claims that required the use of a
computer and still found that the underlying, patent-ineligible invention
could be performed via pen and paper or in a person’s mind.” Versata
Development Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1335 (Fed.
Cir. 2015); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed Cir. 2016) (“Furthermore, with the exception of generic
computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper.”).
Appeal 2020-006090
Application 14/716,843

9
Examiner also found that the claim is directed to certain methods of
organizing human activity. Examiner explained that the claim are directed to
the “abstract idea of modifying the equity holdings in existing portfolio
based on data analysis, which can be performed in the human mind and is a
fundamental economic practice.” Ans. 5.
Appellant responds that “‘modifying the equity holdings’ does not
appear anywhere in the claim.” Reply Br. 6. Appellant also states that the
claim utilized a “computerized rules via a graphical tool” and that “the
actual steps that are recited do not recite any fundamental economic
principle.” Id. at 7.
This argument does not persuade us that Examiner erred in finding
that the claim recites certain methods of organizing human activity. The
Specification states that the “invention relates to evaluating a portfolio
according to a factor exposure analysis and then selecting a factor blend to
achieve an overall factor exposure result.” Spec. ¶ 1. The Specification
further discloses that many investors “pick funds or stocks based on different
criteria” and that “[r]ecommendations, trends, levels of risks, and the like are
weighed against the investors’ needs or desires.” Spec. ¶ 2. The invention is
further described by the Specification as a “returns-based factor analysis
[that] involves using the historical return series of an uploaded portfolio or
fund to reverse engineer the respective factor exposures of a given
portfolio.” Spec. ¶ 4. Further, the Specification states that “the user can build
a portfolio based on desired overall factor exposures that complement the
existing fund or funds, to achieve the desired overall factor exposure result,”
a feature “called building a completion portfolio.” Spec. ¶ 8. The
Specification therefore indicates that the invention is aimed at selecting
Appeal 2020-006090
Application 14/716,843

10
stocks and funds, or “equities” as recited in the claim, to build an investment
“completion” portfolio that complements an existing portfolio. This goal is
reflected in the steps recited in claim 1. Accordingly, we find that the
Examiner did not mischaracterize the claims as “modifying the equity
holdings” of an existing portfolio; this is exactly what is being accomplished
by claim 1.
Analysis of investment data has been found by the courts to be a
fundamental economic practice. See SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1167 (Fed. Cir. 2018) (“Moreover, the ‘investment’ character of
this information simply invokes a separate category of abstract ideas
involved in Alice and many of our cases—‘the creation and manipulation of
legal obligations such as contracts involved in fundamental economic
practices.’ [Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016)]). The selection of “a factor blend to achieve an overall
factor exposure result,” a goal of the claims (Spec. ¶ 1), is essentially
“protecting against risk” by constructing a completion portfolio with the
desired factors and factor weights (claim 1, step 12), depending in part on
the user’s tolerance for risk.4 Alice explained that claims describing “‘the
basic concept of hedging, protecting against risk’” is “a fundamental
economic practice long prevalent in our system of commerce. Alice, 134 S.
Ct. at 2356. Thus, we conclude that the Examiner did not err in determining
that the claims recited a fundamental economic principles or practices, one
of the categories of abstract ideas listed in the grouping of “certain methods
of organizing human activity.” 84 Fed. Reg. 52.

4 Spec. ¶ 2: “Recommendations, trends, levels of risks, and the like are
weighed against the investors’ needs or desires.”
Appeal 2020-006090
Application 14/716,843

11
For the foregoing reasons, we conclude that the Examiner did not err
in determining that claim 1 recites an abstract idea. We therefore proceed to
Step 2A, Prong Two of the analysis.

Step 2A, Prong Two
Prong Two of Step 2A under the 2019 Eligibility Guidance asks
whether there are additional elements that integrate the exception into a
practical application. We must look at the claim elements individually and
“as an ordered combination” to determine whether the additional elements
integrate the recited abstract idea into a practical application. As explained
in the 2019 Eligibility Guidance, integration may be found when an
additional element “reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field” or
“applies or uses the judicial exception in some other meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception.” Id. at 55.
Appellant argues that a “technical improvement is the improved
efficiency by way of graphic-based tools that provide direct access to subsets
of data and functions.” Appeal Br. 13. Appellant states that “the claim[s]
here improve the efficiency by which a computer provides a filtered subset
of factor portfolios for direct selection and generation of tailored portfolios
based on weighted factors to transform an existing portfolio without having
to open, view, or analyze the individual components.” Id. Appellant states
that “[b]y simply uploading a portfolio and selecting a desired factor, the
user is thereafter presented with a completion portfolio and allocation
Appeal 2020-006090
Application 14/716,843

12
instructions executable to use the completion portfolio to transform the
existing portfolio into a target portfolio, all without ever having to open or
look at any particular portfolio component.” Appellant contends these
improvements are similar to the improvements found in Core Wireless
Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018) to
be patent-eligible. Appeal Br. 13. Appellant states that the “claimed graphic
tool filters available factors for a specific subset, supports selection from the
subset, and generates analyses and allocation instructions regarding the
portfolio.” Id. at 14. Appellant also states that another improvement “is
tailored filtering and analysis (e.g., ‘identifying,’ ‘performing,’
‘synthesizing,’ ‘determining,’ and ‘comparing’), which has been found
patent-eligible” in Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305
(Fed. Cir. 2018). Appeal Br. 14.
Appellant contends that the claim “represents an integration into a
practical application by way of use with devices capable of displaying
graphic user interfaces that guide factor-based selection and that initiate
analyses, construction and synthesis of analytical tools, and generation of
executable instructions.” Appeal Br. 16. Appellant asserts that the
“generation of executable instructions for transforming existing portfolios
into new” is an “additional element.” Id.
We begin by looking at the “graphical user interface” which Appellant
asserts is a technical improvement that provides “direct access to subsets of
data and functions.” Appeal Br. 13. The term appears in steps 2, 8, and 12 of
claim 1. The steps are copied below:
[2] receiving an uploaded existing portfolio from a user device
via a graphical user interface, wherein the graphical user
interface displays graphical representation of the set of factors;
Appeal 2020-006090
Application 14/716,843

13
[6] displaying results of the analysis on the graphical user
interface;
[8] receiving via the graphical user interface a selected subset of
factors from the set of factors that are common across the
historical return series;
[12] constructing the completion portfolio that includes the
additional factors and factor weights missing from the existing
portfolio and displaying the completion portfolio on a graphical
user interface.

In step 2 of the claim, an “existing portfolio” is received “via a
graphical user interface.” The graphical user interface “displays graphical
representation of the set of factors.” Step 2 does not recite any function of
the graphical user interface other than for it to display a set of factors.
Step 6 displays the “results of the analysis” performed in steps 3–5,
but does not perform a function other than as a display for the results.
The graphical user interface receives “a selected subset of factors
from the set of factors that are common across the historical return series” in
step 8. Step 8, however, does not recite that the graphical user interface
performs any operation on the factors other than to receive them.
The completion portfolio is displayed on the graphical user interface
in step 12.
As indicated by the plain language of these steps, the graphical user
interface does not “filter” factors as asserted by Appellant (Appeal Br. 15),
but rather serves as a static display on which factors, results of an analysis,
and a completion portfolio are displayed.
Claim 1 is not like the patent-eligible claim in Core Wireless as
asserted by Appellant. The court in Core Wireless, 880 F.3d at 1359, 1362–
1363, determined that a claim directed to a computing device comprising a
display screen “configured to display on the screen a menu listing one or
Appeal 2020-006090
Application 14/716,843

14
more applications” and “to display on the screen an application summary
that can be reached directly from the menu” was patent-eligible because the
claim “restrains the type of data that can be displayed in the summary
window” and specified “a particular manner by which the summary window
must be accessed.”5 Further, the claim in Core Wireless improved
“efficiency of using the electronic device by bringing together ‘a limited list
of common functions and commonly accessed stored data,’ which can be
accessed directly from the main menu.” Id. at 1363.
The graphical user interface in claim 1 does not provide a menu, as in
Core Wireless, that provides any type of functionality. Instead, the graphical
user interface as recited in claim 1 is a passive display of the information
and analysis performed in the claim.
In another case involving trading securities, Trading Technologies
International, Inc. v. CQG, INC., 675 Fed. Appx. 1001, 1014 (Fed. Cir.
2017) (non-precedential), the court found the disputed claims to be patent-
eligible because they “require a specific, structured graphical user interface
paired with a prescribed functionality directly related to the graphical user
interface’s structure that is addressed to and resolves a specifically identified
problem in the prior state of the art.” The interface in this appeal is not

5 Core Wireless, 880 F.3d at 1359: “the computing device being configured
to display on the screen a menu listing one or more applications, and
additionally being configured to display on the screen an application
summary that can be reached directly from the menu, wherein the
application summary displays a limited list of data offered within the one or
more applications, each of the data in the list being selectable to launch the
respective application and enable the selected data to be seen within the
respective application, and wherein the application summary is displayed
while the one or more applications are in an un-launched state.”
Appeal 2020-006090
Application 14/716,843

15
recited in the claim to have a functionality associated with the display of
information on it; rather, it is passive and static.
Claim 1 is also not like Finjan as asserted by Appellant. In Finjan,
879 F.3d at 1305 (Fed. Cir. 2018), the court found the recitation in the claim
of “a new kind of file that enables a computer security system to do things it
could not do before” to confer eligibility on the claim. Here, Appellant has
not established that the claimed graphical user interface imparts a function
on the user device which enables it to do something it could not do before.
We have not been directed to any function provided by the interface other
than to receive and display information.
The hallmark of eligibility in these cases is the recitation of a specific
element with a defined functionality. Such hallmark is missing from the
claims here. As explained above, the graphical user interface is devoid of
specific functionality in contrast to the additional element in the patent-
eligible claims in Core Wireless, Trading Technologies, and Finjan.
Appellant asserts that the graphical user interface provides a technical
improvement of supporting “selection from the subset, and generates
analyses and allocation instructions regarding the portfolio, all without
having to page through irrelevant options or open or view any particular
portfolio or component thereof,” but does not identify a specific limitation in
the claim through which this is achieved (Appeal Br. 14). Our analysis of the
claim limitations show that the graphical user interface does not possess the
alleged technical improvements asserted by Appellant. Consequently, we do
not agree with Appellant that the interface integrates the abstract idea into a
practical application. Appeal Br. 17.
Appeal 2020-006090
Application 14/716,843

16
Appellant also argues that another improvement is in the filtering and
analysis, citing steps 3, 5, 7, 9, and 10 of claim (the identifying, performing,
synthesizing, determining, and comparing steps). Appeal Br. 14. The steps
cited by Appellant are the steps in the claim that carry out the fundamental
economic practice of selecting the equities in the portfolio based on the
factors. In the steps cited by Appellant as the technical improvement, the
factors are first identified (step 3), the factor coefficient is performed (step
5), and the existing portfolio is synthesized (step 7). A target portfolio is
determined in step 9 and the target portfolio is compared to the existing
portfolio in step 10. As explained above, these steps could be performed in
the human mind and therefore represent the abstract idea. The steps are also
integral to the fundamental economic practice of building a completion
portfolio of equities. To confer eligibility, the claim must recite elements or
limitations which are in addition to the abstract idea and not be the abstract
idea, itself. As explained in DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1255 (Fed. Cir. 2014), the elements recited in the claim must be
examined to determine “whether the additional elements transform the
nature of the claim into a patent-eligible application of that abstract idea.”
See also Alice, 573 U.S. at 217 (cited supra in the “Principles of Law”
section). The steps cited by Appellant are not the requisite additional
elements because they represent the abstract ideas recited in the claim.
The aforementioned steps also do not confer patent–eligibility because
they recite the desired result, e.g., synthesizing the existing portfolio and
construction the completion portfolio, but not how the result is
accomplished. As explained in McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016), we must “look to whether the
Appeal 2020-006090
Application 14/716,843

17
claims in these patents focus on a specific means or method that improves
the relevant technology or are instead directed to a result or effect that itself
is the abstract idea and merely invoke generic processes and machinery.”
Here, the result is claimed, but not how to get to the result. For
example, step 7 recites “synthesizing the existing portfolio based on a set of
at least one of the stored factor portfolios . . ., wherein each of the selected
factor portfolios is assigned a weight within the synthesized portfolio.” But
other than describing what to consider in synthesizing the portfolio, the step
does not identify a specific way to implement it. In other words, step 7
covers every way of synthesizing a portfolio using a stored factor portfolio
and weights and thus would preempt all ways of doing so. This same
analysis applies to steps 3, 5, 9, and 10. In essence, the claims are like those
in SAP America, 898 F.3d at 1167, where the court found that claims
involving the statistical analysis of investment data were focused on
“selecting certain information, analyzing it using mathematical techniques,
and reporting or displaying the results of the analysis,” which the court
determined to be “all abstract.” For this reason, we conclude that the above-
mentioned steps cited by Appellant as a technical improvement do not
integrate the abstract idea into a practical application, because they embody
the abstract idea, “the ‘principle in the abstract’ no matter how
implemented.” Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1343
(Fed. Cir. 2018).
Appellant also states the claim recites “a transformation of an existing
portfolio based on a completion portfolio of weighted factors (ingredients)
into a target portfolio” that is further evidence of “an integration into a
Appeal 2020-006090
Application 14/716,843

18
practical application.” Appeal Br. 17. We do not agree that this is the type of
transformation that confers patent-eligibility on a claim.
In Diehr, the raw materials for rubber were cured into a molded
synthetic rubber. The formula, an abstract idea, was used to control a
physical process by determining when a compound was cured in order to
automatically open the mold.
Although the claim recited the Arrhenius equation, which is a
mathematical formula, the Court held that the claim was eligible for a patent.
[W]hen a claim containing a mathematical formula implements
or applies that formula in a structure or process which, when
considered as a whole, is performing a function which the
patent laws were designed to protect (e.g., transforming or
reducing an article to a different state or thing), then the claim
satisfies the requirements of § 101.
Diehr, 450 U.S. at 192–93.
In McRO, the claimed process recited “a combined order of specific
rules that renders information into a specific format that is then used and
applied to create desired results: a sequence of synchronized, animated
characters.” As discussed in SAP America, 898 F.3d at 1167, the claims in
McRO were “directed to the creation of something physical—namely, the
display of “lip synchronization and facial expressions” of animated
characters on screens for viewing by human eyes.”
Here, the transformation from an existing portfolio into a completion
portfolio is not a physical transformation, but merely changing the equity
composition of a portfolio, which is “all abstract” and not the same type of
transformation described in Diehr and McRO.
Because we find that the abstract idea is not integrated into a practical
application under Step 2, Prong Two, we proceed to Step 2B of the analysis.
Appeal 2020-006090
Application 14/716,843

19

Step 2B
Step 2B of the Eligibility Guidance asks whether there is an inventive
concept. In making this Step 2B determination, we must consider whether
there are specific limitations or elements recited in the claim “that are not
well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present,” or whether the claim
“simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception, indicative that an inventive concept may not be present.” 84 Fed.
Reg. 56 (footnote omitted).
Examiner considered the combination of steps recited claim 1, but
found that “mere instructions to apply mental processing on a generic
electronic device cannot . . . provide an inventive concept in Step 2B.” Final
Act. 11.
Appellant contends that “Examiner fails to consider the specific
ordered arrangement of graphic and analytical tools operating in
combination in a way that deviates from conventional human mental
processes.” Appeal Br. 18. Appellant also argues that “the claimed graphical
tool minimizes steps that have to be performed by the user, while providing
results that are systematic yet tailored based on objective factors in a
deviation from prior systems that relied on subjective human judgments.”
Reply Br. 9.
The only additional element cited by Appellant is the graphical user
interface. The graphical user interface recited in the claim is simply an
interface that receives and displays information. Appellant does not establish
Appeal 2020-006090
Application 14/716,843

20
that the claim recites a specific arrangement of the interface with the other
elements in the claim that could be characterized as unconventional.
The Federal Circuit has “explained that claims directed to ‘an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity,’ are patent eligible.
[Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).]”
Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1315 (Fed. Cir. 2019). The
claims in this appeal are direct to an “economic” task of constructing a
portfolio of equities. Appellant did not direct us to additional steps in the
claim that, when considered in the context of the claim as a whole, invoke an
inventive concept.
For the foregoing reasons, we affirm the rejection of claim 1 as
patent-ineligible. Claims 3, 6–8, 10, and 22–26 are not argued separately and
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 6–8,
10, 22–26
101 Eligibility 1, 3, 6–8,
10, 22–26

Appeal 2020-006090
Application 14/716,843

21

TIME PERIOD
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).

AFFIRMED