Ex Parte Huang et al

Patent Trial and Appeal Board

Nov 28, 2018

13359035 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/359,035 01/26/2012
61834 7590
Meister Seelig & Fein LLP
125 Park Avenue
7th Floor
NEW YORK, NY 10017
11/30/2018
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.
6153-053C 2809
EXAMINER
MERCHANT, SHAHID R
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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 and TODD TAYLOR
Appeal2017-010428 1
Application 13/359,0352
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
September 13, 2016) and Reply Brief ("Reply Br.," filed August 2, 2017),
and the Examiner's Answer ("Ans.," mailed June 2, 2017) and Final Office
Action ("Final Act.," mailed August 27, 2015).
2 Appellants identify New York Life Insurance Company of New York,
New York as the real party in interest. App. Br. 2.
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Application 13/359,035
CLAIMED INVENTION
Appellants' claimed invention "relates to the field of computerized
methods and systems for financial planning, and more particularly, to
computerized methods and systems for providing investment or retirement
portfolio allocations among a plurality of financial investment vehicles"
(Spec. ,r 2).
Claims 1 and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computerized method for processing data
between intercommunicating software in memory comprising:
receiving, via a processor, investor-specified information,
including investor factors, a subjective life expectancy of the
investor, and a retirement objective value from a scale of
preference between income risk and legacy potential, the
investor factors including a withdrawal rate or income need;
executing, via the processor, investment vehicle allocation
software from a first memory causing the processor to combine
a permutation of the investor factors with a plurality of asset and
product combinations including a set of model portfolios for
various risk tolerances, the plurality of asset and product
combinations having various percentages of a total investment
allocated between fixed annuities, variable annuities, and the set
of model portfolios;
executing, via the processor, simulation software from a
second memory to facilitate intercommunication between the
simulation software and the investment vehicle allocation
software from the first memory to generate a solution space by
simulating the combined permutation of the investor factors with
the plurality of asset and product combinations from the
investment vehicle allocation software from the first memory
based on the subjective life expectancy, the solution space
including median account balance plus death benefits at the
subjective life expectancy and probability of assets remaining
from the plurality of asset and product combinations for survival
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Application 13/359,035
of the investor at a time horizon beyond the subjective life
expectancy;
storing, via the processor, the solution space into a
database;
partitioning, via the processor, the solution space within
the database into sections corresponding to a range of retirement
objectives;
identifying via the processor, from a given section of the
solution space within the database that corresponds to the
retirement objective value, an optimal financial product
combination for the investor in a given one of the plurality of
asset and product combinations; and
transmitting, via the processor, instructions to one or more
financial servers configured to process the instructions to
perform operations based on the optimal financial production
combination.
REJECTION
Claims 1-27 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
ANALYSIS
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."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
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 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
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Application 13/359,035
patent-eligible applications of those concepts." Alice Corp., 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." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under § 101, the Examiner determined
that claims 1-27 are directed to "allocating assets among a plurality of
financial products for an investment portfolio," which the Examiner
determined is a fundamental economic practice, and, therefore, an abstract
idea (Final Act. 4). The Examiner also determined that the claims do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception because "the claims do not include an
improvement to another technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations beyond
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Application 13/359,035
generally linking the use of an abstract idea to a particular technological
environment" (id.).
Responding to Appellants' arguments in the Answer, the Examiner
identifies the following "additional limitations" of claim 1:
"investor-specified information, including investor factors, a
subjective life expectancy of the investor, and a retirement
objective value from a scale of preference between income risk
and legacy potential, the investor factors including a withdrawal
rate or income need";
"combine a permutation of the investor factors with a plurality
of asset and product combinations including a set of model
portfolios for various risk tolerances, the plurality of asset and
product combinations having various percentages of a total
investment allocated between fixed annuities, variable
annuities, and the set of model portfolios";
"simulation software from a second memory to facilitate
intercommunication between the simulation software and the
investment vehicle allocation software from the first memory to
generate a solution space by simulating the combined
permutation of the investor factors with the plurality of asset
and product combinations from the investment vehicle
allocation software from the first memory based on the
subjective life expectancy";
"solution space including median account balance plus death
benefits at the subjective life expectancy and probability of
assets remaining from the plurality of asset and product
combinations for survival of the investor at a time horizon
beyond the subjective life expectancy";
"partitioning, via the processor, the solution space within the
database into sections corresponding to a range of retirement
objectives"; [and]
"process the instructions to perform operations based on the
optimal financial production combination."
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Application 13/359,035
Ans. 22-23. And the Examiner concludes "[ t ]hese limitations comprise only
a generic computer performing generic computer functions that do not
impose meaningful limits on the claimed system/method" (id. at 23).
Since the Examiner's Answer was mailed, the Federal Circuit,
addressing step two of the Mayo/Alice framework in Berkheimer v. HP, Inc.,
881 F.3d 1360 (Fed. Cir. 2018), has held that the question of whether a
claim element or combination of elements is well-understood, routine, and
conventional to a skilled artisan in the relevant field is a question of fact.
Berkheimer, 881 F.3d at 1368.
Shortly after the Federal Circuit issued its decision in Berkheimer, the
USPTO issued an April 19, 2018 Memorandum to the Patent Examining
Corps entitled, "Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.)" (the "Berkheimer Memorandum"), 3 in which the
Office revised the procedures set forth in Manual of Patent Examining
Procedure ("MPEP") § 2106.07(a) (Formulating a Rejection For Lack of
Subject Matter Eligibility) and MPEP § 2106.07(b) (Evaluating Applicant's
Response). Berkheimer Memorandum 3. The Patent Examining Corps was,
thus, instructed that "in a step 2B analysis [i.e., an analysis under step two of
the Mayo/Alice framework], an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds and expressly supports a rejection in writing with one or
more of' ( 1) a "citation to an express statement in the specification or to a
statement made by an applicant during prosecution that demonstrates the
3 Available at: https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419 .pdf.
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well-understood, routine, conventional nature of the additional element(s)";
(2) a "citation to one or more of the court decisions discussed in MPEP §
2106.05(d)(II) as noting the well-understood, routine, conventional nature of
the additional element(s)"; (3) a "citation to a publication that demonstrates
the well-understood, routine, conventional nature of the additional
element(s)"; and (4) a "statement that the examiner is taking official notice
of the well-understood, routine, conventional nature of the additional
element(s)."
By merely summarily characterizing the identified "additional
elements" as comprising "only a generic computer performing generic
computer functions," the Examiner has failed to sufficiently establish that
these limitations are well-understood, routine, and conventional to a skilled
artisan in the relevant field, i.e., that the claims fail to satisfy step two of the
Mayo/Alice framework.
Accordingly, based on the present record, we are constrained to
reverse the Examiner's rejection of claims 1-27 under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 1-27 under 35 U.S.C. § 101 is
reversed.
REVERSED
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