INTECH Investment Management LLC

Patent Trials and Appeals Board

Jun 30, 2020

2019001925 (P.T.A.B. Jun. 30, 2020)

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.
14/732,304 06/05/2015 Adrian D. Banner 34927-307666 1013
20480 7590 06/30/2020
STEVEN L. NICHOLS
Fabian Vancott
215 S. State Street
SUITE 1200
SALT LAKE CITY, UT 84111
EXAMINER
SUBRAMANIAN, NARAYANSWAMY
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ADRIAN D. BANNER,
VASILEIOS PAPATHANAKOS,
and PHILLIP WHITMAN
________________

Appeal 2019-001925
Application 14/732,304
Technology Center 3600
________________

Before BRADLEY W. BAUMEISTER, AMBER L. HAGY, and
RUSSELL E. CASS, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–13 and 21.1 Appeal Br. 13–22. We have jurisdiction
under 35 U.S.C. § 6(b). The Board conducts a limited de novo review of the
appealed rejections for error based upon the issues identified by Appellant,
and in light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). 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 Intech
Investment Management LLC. Appeal Brief filed September 6, 2018
(“Appeal Br.”) 2.
Appeal 2019-001925
Application 14/732,304

2
STATEMENT OF THE REJECTIONS
Claims 1–13 and 21 stand rejected under 35 U.S.C. § 101 as being
directed to a judicial exception to patent-eligible subject matter (an abstract
idea) without reciting significantly more. Final Act. 2–10.2
Claims 1–13 and 21 also stand rejected under 35 U.S.C. § 103 as
being unpatentable. Final Act. 10–23.

THE SECTION 101 REJECTION
The Claimed Invention
Independent claim 1 represents the appealed claims.3 Claim 1 is
reproduced below with paragraph designators added for ease of reference
and emphasis added to the claim language that recites an abstract idea:
1. A method for analyzing a performance of at least one asset
in a portfolio, the method comprising, with a processor having
an associated memory:
[(a)] retrieving, from a number of financial sources,
information for a list of trades, the list of trades representing
assets associated with a portfolio that have been traded during a
time interval;
[(b)] determining, based on the information, a number of
returns associated with the list of trades over the time interval;

2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
May 23, 2018 (“Final Act.”); the Examiner’s Answer mailed November 16,
2018 (“Ans.”); and the Reply Brief filed January 3, 2019 (“Reply Br.”).
3 Appellant argues the section 101 rejection of all of the appealed claims
together as a group. Appeal Br. 13–22. Accordingly, we select independent
claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2019-001925
Application 14/732,304

3
[(c)] creating, for each trade of the assets in the list of trades, a
remainder fraction, the remainder fraction being equal to an
initial fraction for that trade;
[(d)] determining, for each sale of the assets in the list of trades,
a rebalancing trading profit contribution to a portfolio return
over the time interval via trade attribution matching;
[(e)] computing an incidental exposure residual expressed in
currency and/or percentage to the portfolio return over the time
interval; and
[(f)] presenting a performance of the assets in the portfolio
comprising: the rebalancing trading profit contribution for each
asset, and the incidental exposure residual for the portfolio.
Principles of Law
A. SECTION 101:
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). In accordance with that framework, we first determine what concept
the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the
claims before us are drawn to the concept of intermediated settlement, i.e.,
the use of a third party to mitigate settlement risk.”); see also Bilski v.
Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’
Appeal 2019-001925
Application 14/732,304

4
application explain the basic concept of hedging, or protecting against
risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. at 191 (citing
Benson and Flook) (citation omitted); see also, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
Appeal 2019-001925
Application 14/732,304

5
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO SECTION 101 GUIDANCE:
In January 2019, the U. S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“October 2019
Guidance Update”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). “All USPTO personnel
are, as a matter of internal agency management, expected to follow the
guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019
Guidance Update at 1.
Appeal 2019-001925
Application 14/732,304

6
Under the 2019 Guidance, we first look to whether the claim recites
the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
2019 Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, [and] conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Guidance, 84 Fed. Reg. at 56.
Analysis
STEP 2A, PRONG 1:
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). 84 Fed. Reg. at 52–54.
Appeal 2019-001925
Application 14/732,304

7
Limitations (a)–(f) of claim 1 recite a certain method of organizing
human activity. More specifically, the steps recite a fundamental economic
practice that entails managing risk in the buying and selling of assets in an
asset portfolio. As Appellant explains,
The principles described herein include a method for
analyzing a performance of at least one asset in a portfolio. . . .
Such a method identifies a profit resulting from trading assets
during a lifetime of a portfolio in a rebalancing manner by buying
assets at a low cost and selling the assets at a higher cost. Further,
such a method identifies an incidental exposure residual of the
performance of the portfolio since the portfolio may be exposed
to various risk factors.
Spec. ¶ 12. The 2019 Guidance expressly recognizes such certain methods
of organizing human activities as constituting patent-ineligible abstract
ideas. 2019 Guidance, 84 Fed. Reg. at 52. The October 2019 Guidance
Update further explains,
the sub-groupings [within the exception of “Certain Methods of
Organizing Human Activity”] encompass both activity of a
single person (for example, a person following a set of
instructions or a person signing a contract online) and activity
that involves multiple people (such as a commercial interaction),
and thus, certain activity between a person and a computer (for
example a method of anonymous loan shopping that a person
conducts using a mobile phone) may fall within the “certain
methods of organizing human activity” grouping. The number
of people involved in the activity is not dispositive as to whether
a claim limitation falls within this grouping. Instead, the
determination should be based on whether the activity itself falls
within one of the sub-groupings.
October 2019 Guidance Update at 5.
Limitation (a)’s step of retrieving information also constitutes a
mental process that entails an observation. The step of “retrieving, from a
number of financial sources, information for a list of trades, the list of trades
Appeal 2019-001925
Application 14/732,304

8
representing assets associated with a portfolio that have been traded during a
time interval” reads on the act of observing or reading printed reports—a
concept that can be performed in the human mind. The 2019 Guidance also
recognizes mental processes, including observations that can be performed
in the human mind or with the aid of pen and paper, as constituting a patent-
ineligible abstract idea. 2019 Guidance, 84 Fed. Reg. at 52; see also
October 2019 Guidance Update at 9 (“A claim that encompasses a human
performing the step(s) mentally with the aid of a pen and paper recites a
mental process.” (emphasis omitted).)
The steps recited in limitations (b)–(e) also reasonably constitute
mental processes. More specifically, the following steps constitute mental
evaluations or judgements that can be performed in the human mind or with
the aid of pen and paper: (b) determining a number, (c) creating a remainder
fraction, (d) determining a rebalancing trading profit, and (e) computing a
residual. The 2019 Guidance’s mental-processes judicial exception also
includes evaluations and judgements. 2019 Guidance, 84 Fed. Reg. at 52.
Limitation (f)’s step of presenting a performance of the assets in the
portfolio also constitutes a mental process. More specifically, presenting a
performance, as claimed, constitutes expressing an opinion either orally or
with the aid of pen and paper. The 2019 Guidance recognizes that the
mental-processes judicial exception includes expressing opinions.
2019 Guidance, 84 Fed. Reg. at 52.
For these reasons, each of limitations (a) through (f) recites a judicial
exception to patent-eligible subject matter under step 2A, prong 1, of the
2019 Guidance. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
Appeal 2019-001925
Application 14/732,304

9
1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another abstract idea
. . . does not render the claim non-abstract.”).
STEP 2A, PRONG 2:
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that individually or in
combination integrate the judicial exception into a practical application.
2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance provides
exemplary considerations that indicate that an additional element or
combination of elements integrates the judicial exception into a practical
application, such as whether the element reflects an improvement in the
functioning of a computer or an improvement to other technology or
technical field. Id. at 55; MPEP § 2106.05(a).
The preceding analysis of the abstract ideas recited in claim 1
indicates that claim 1’s “additional elements” only consist of a “processor
having an associated memory,” as recited in the claim’s preamble. A
“processor having an associated memory” is simply part of a generic
computer that executes the recited abstract ideas. See Alice, 573 U.S. at 226
(determining that the claim limitations “data processing system,”
“communications controller,” and “data storage unit” were generic computer
components that amounted to mere instructions to implement the abstract
idea on a computer); October 2019 Guidance Update at 11–12 (recitation of
generic computer limitations for implementing the abstract idea “would not
be sufficient to demonstrate integration of a judicial exception into a
practical application”). Nothing in claim 1 reasonably indicates that
anything other than a generic computer is needed to carry out the abstract
idea.
Appeal 2019-001925
Application 14/732,304

10
Furthermore, even if claim 1’s first step of “retrieving, from a number
of financial sources, information for a list of trades, the list of trades
representing assets associated with a portfolio that have been traded during a
time interval” is interpreted narrowly as reciting more than an abstract idea
by virtue of the preamble stating that the claims are carried out by a
processor having a memory, limitation (a) still does not add significantly
more to the recited abstract ideas. Under this narrow interpretation,
limitation (a) still merely recites insignificant pre-solution activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
Under a similarly narrow interpretation of limitation (f), claim 1’s
final step of “presenting a performance of the assets in the portfolio,” as
claimed does not add any meaningful limitations to the abstract idea either.
The limitation merely is directed to the insignificant post-solution activity of
presenting information. E.g., Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1241–42 (Fed. Cir. 2016) (holding that printing or downloading generated
menus constituted insignificant extra-solution activity).
Appellant argues that the claims are directed to patent-eligible subject
matter because the claims recite an improvement in computer-related
technology. Appeal Br. 14. To support this assertion, Appellant points to
the Specification’s discussion of “the problem[s] of current systems which
do not allow certain types of analysis and which may not accurately
determine portfolio performance based on asset trading.” Id. at 16. While
Appeal 2019-001925
Application 14/732,304

11
we do not question Appellant’s assertion that “an analysis of Appellant’s
specification indicates that the claim provides a . . . solution at least in the
form of the performance metrics that are determined and how those metrics
are determined,” Appellant does not persuade us that such a solution is a
“technological-based solution.” Id. at 17. Rather, Appellant’s Specification
indicates that the purported improvement relates to the underlying abstract
ideas, and the additional elements—“the computer having an associated
memory”—merely help perform the abstract ideas more efficiently. See
BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018)
(“It has been clear since Alice that a claimed invention’s use of the ineligible
concept to which it is directed cannot supply the inventive concept that
renders the invention ‘significantly more’ than that ineligible concept.”);
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (“[A] claim for a new abstract idea is still an abstract idea.” (emphasis
omitted)); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) (“What is needed is an inventive concept in the non-abstract
application realm.”).
Appellant argues that the claims recite patent-eligible subject matter
because the “the claims do not recite the mere idea of portfolio performance
analysis, but rather very clearly describe ‘a particular way to achieve’ such
analysis, including creating remainder fractions, determining a rebalancing
trading profit contributions, and calculating an incidental exposure residual.”
Appeal Br. 17–18. This argument is unpersuasive. The level of abstraction
at which the Examiner describes the invention does not change the accuracy
of the Examiner’s determination. Apple, 842 F.3d at 1240 (“An abstract idea
can generally be described at different levels of abstraction.”); see also SAP
Appeal 2019-001925
Application 14/732,304

12
Am. Inc., 898 F.3d at 1168 (“[E]ven if a process of collecting and analyzing
information is ‘limited to particular content’ or a particular ‘source,’ that
limitation does not make the collection and analysis other than abstract.”
(citation omitted)).
Appellant argues that the claims are directed to patent-eligible subject
matter because “the claims and specification include subject matter that is
non-conventional and non-routine.” Appeal Br. 18. According to
Appellant, “the subject matter of the present claims is not taught by any
reference.” Id. at 19.
Even assuming Appellant’s assertions to be true, though, the
arguments still are unpersuasive. “The ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188–
89 (1981). A novel and nonobvious claim directed to a purely abstract idea
is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.
For these reasons, Appellant does not persuade us that claim 1 is
directed to an improvement in the function of a computer or to any other
technology or technical field. MPEP § 2106.05(a). Nor is claim 1 directed
to a particular machine or transformation. MPEP §§ 2106.05(b), (c). Nor
has Appellant persuasively demonstrated that claim 1 adds any other
meaningful limitations for the purposes of the analysis under Section 101.
MPEP § 2106.05(e). Accordingly, Appellant has not persuaded us that
claim 1 integrates the recited abstract ideas into a practical application
within the meaning of the 2019 Guidance. See 2019 Guidance, 84 Fed.
Reg. at 52–55.
Appeal 2019-001925
Application 14/732,304

13
STEP 2B:
Under step 2B of the 2019 Guidance, we next analyze whether
claim 1 adds any specific limitations beyond the judicial exception that,
either alone or as an ordered combination, amount to more than “well-
understood, routine, conventional” activity in the field. 84 Fed. Reg. at 56;
MPEP § 2106.05(d).
The Examiner determines, and we agree, that the preamble’s claim
language, “a processor having an associated memory,” merely recites
conventional computer components. Ans. 9–10 (citing Spec. ¶¶ 29–31, 110–
11, 117, Figures 1, 5, 6). See, e.g., Spec. ¶ 30 (“To allow the computers and
the servers to exchange data, the computer network (106) may include
various hardware components. The hardware components may include
processors, a number of data storage devices, a number of peripheral device
adapters, and a number of network interfaces (103).”); id. ¶ 117 (“The
analyzing system (600) of Fig. 6 may be part of a general purpose
computer.”); id. ¶ 110 (“The machine-readable storage medium (604)
represents generally any memory capable of storing data such as instructions
or data structures used by the analyzing system (600).”).
Furthermore, Appellant’s Specification does not indicate that
consideration of these conventional elements as an ordered combination
adds any significance beyond the additional elements, as considered
individually. Rather, Appellant’s Specification indicates that the invention
is directed to a fundamental economic practice (an abstract idea) —
managing risk in the buying and selling of assets in an asset portfolio—that
is made more efficient with generic computer components. Spec. ¶ 12.
Appeal 2019-001925
Application 14/732,304

14
For these reasons, we determine that claim 1 does not recite additional
elements that, either individually or as an ordered combination, amount to
significantly more than the judicial exception within the meaning of the
2019 Guidance. See 84 Fed. Reg. at 52–55; MPEP § 2106.05(d).
Accordingly, we sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. We,
likewise, sustain the 101 rejection of claims 2–13 and 21, which Appellant
does not argue separately. Appeal Br. 13–22.

THE SECTION 103 REJECTION
The Rejection
Claims 1–13 and 21 also stand rejected under 35 U.S.C. § 103 as
being unpatentable over Damschroder (US 2009/0292648 Al; published
Nov. 26, 2009) and Altomare (US 2012/0030138 Al; published Feb. 2,
2012). Final Act. 10–23.
Examiner Determinations and Appellant’s Contentions
The Examiner finds that Damschroder teaches most of the limitations
of independent claim 1, but does not teach the limitation, “wherein the
rebalancing trading contribution is a rebalancing trading profit contribution
and a performance comprising the rebalanacing trading […] contribution for
each asset.” Final Act. 13–14. The Examiner finds that Altomare teaches
this limitation and determines that motivation existed to combine these
teachings with those of Damschroder. Id. at 14.
Appellant asserts that the Examiner’s reliance on Damschroder is
misplaced because “Damschroder relates to ‘measuring and analyzing
diversification of portfolio assets’ . . . and not the performance of a
Appeal 2019-001925
Application 14/732,304

15
portfolio.” Appeal Br. 23 (citing Damschroder, Abstract). Turning to the
actual claim language, Appellant argues, inter alia, that Damschroder fails to
teach or suggest “determining, based on the information, a number of returns
associated with the list of trades over the time interval.” Id. Appellant
acknowledges that one of the four paragraphs relied upon in the rejection for
teaching this limitation describes “a ‘rank selection’” and another of
Damschroder’s paragraphs mentions “risk of return,” but argues that
Damschroder “in no way describes determining ‘a number of returns
associated with the list of trades over a time interval.’” Id. Appellant
asserts, “it appears as if the final Action is identifying keywords from the
claim recitation without considering that the description of those keywords
in Damschroder does not match with the claim recitations.” Id.
Analysis
In relation to the disputed limitation, the rejection reads, in its entirety,
as follows:
See Damschroder, at least at [0145], [0156], [0164], [0226]
{determining based on the data (see, e.g., [0145], “rank selection
. . . determined by examining the derivates of the relationship
measures . . . determined by portfolio objectives”, [0226],
“determination of a portfolio”) a number of returns associated
with the trades over the time interval (see, e.g., [0156], “principal
component analysis, allocation weights or attribution exposures
for . . . risk or return” [0164], “sample based on a return series
. . . return series and the weight of the sample”)}[.]
Final Act. 12.
Appellant’s Specification defines the claim term “return” as “a net
gain or net loss.” Spec. ¶ 17. The Final Action’s analysis of this disputed
claim limitation rejection does not reasonably explain how these four cited
passages of Damschroder teach determining a number of returns associated
Appeal 2019-001925
Application 14/732,304

16
with a list of trades over a time interval, as claimed. See Final Act. 12. Nor
does our review of the four cited, disparate passages reasonably indicate that
Damschroder, in fact, teaches or suggests this limitation.
Accordingly, Appellant persuades us of error in the Examiner’s obviousness
rejection of independent claim 1. We, therefore, do not sustain the
Examiner’s rejection of that claim or of claims 2–13 and 21, which either
depend from claim 1 or otherwise include similar claim language. See
independent claim 9 (reciting, “the system comprising . . . a profit
determining engine to determine, for each sale of the assets in the list of
trades, a rebalancing trading profit contribution to a portfolio return over a
time interval”); see also independent claim 21 (reciting, “retrieving
information comprising a list of trades of assets of a portfolio during a
specific time interval; . . . determining performance metrics . . . [which]
metrics comprise: . . . a benchmark return . . . over the specific time
interval”).

DECISION SUMMARY
In summary:

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–13, 21 101 Eligibility 1–13, 21
1–13, 21 103 Damschroder,
Altomare
1–13, 21
Overall
Outcome
1, 13–21