Ex Parte Milosavljevic et al

Patent Trial and Appeal Board

Jan 17, 2013

09880170 (P.T.A.B. Jan. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OLGA MILOSAVLJEVIC, MARK DE VINCENZI,
and
JAMES PETERSON
____________

Appeal 2011-012007
Application 09/880,170
Technology Center 3600
____________

Before: JOSEPH A. FISCHETTI, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012007
Application 09/880,170

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1, 2, 4, 5, 7, 9, 11-
20, 36, 39-41, and 43-48. We have jurisdiction to review the case under 35
U.S.C. §§ 134 and 6 (2002).
The invention relates to retirement income planners. More
particularly, the invention relates to forecasting a customer’s income,
managing order of withdrawal, forecasting likelihood that assets at
retirement will provide needs for retirement, and providing ability to
perform alternative analysis by changing various retirement goals in
retirement (Spec. 1:10-14).
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. A method for using a desktop including a display
for forecasting a likelihood that a customer’s assets held in a
plurality of different types of customer accounts at retirement
meet in-retirement goals, including, but not limited to, an
annual income withdrawal goal, an estate goal, and a years in
retirement goal, comprising:
inputting said income withdrawal goal, said estate goal,
said years in retirement goal, and a current asset allocation, and
identifying one of said in-retirement goals as a priority goal;
performing an analysis based on said in-retirement goals
and said current asset allocation;
forecasting, by using results of said analysis, said
likelihood that said customer assets at retirement meet said
priority goal;
providing an in-retirement income stream withdrawal
strategy, wherein said income stream withdrawal strategy
provides tax advantages and wherein said income stream
withdrawal strategy provides for a first time period and said
income stream withdrawal strategy avoids withdrawal of assets
from tax deferred accounts during the first time period, and said
income stream withdrawal strategy providing for withdrawal
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from one or more tax deferred accounts during a second time
period;
providing, using the display, a findings overview report
based on said analysis, wherein the findings overview report
includes the in-retirement goals, and the likelihood that the
priority goal will be met if the in-retirement income stream
withdrawal strategy is followed, wherein the likelihood is
displayed as a percentage, and the findings overview report
further including an asset drawn down schedule which shows a
predicted end of year account balance for each of the plurality
of different types of customer accounts if the in-retirement
income stream withdrawal strategy is followed;
projecting annual snapshot cash flows from said current
asset allocation and determining if a gap exists between said
projected cash flows and said income goal; and
providing, using the display, a current performance
planning table, wherein said table allows for assessing
approximate current yield and total return information in order
to determine which holdings of said assets provide cash flow
versus growth required to meet said in-retirement goals, and
further wherein said current performance planning table
includes information on each asset’s annual income, 1-year and
5-year total returns, and current value.

Claims 1, 2, 4, 5, 7, 9, 11-20, 36, 39-41, and 43-48 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Corrin (US 2002/0035527
A1, pub. Mar. 21, 2002) in view of Tracey Longo, The First Cut Is The
Cheapest: Retirement distributions can come from many sources IRAs,
401(k)s, and so on. Knowing where to start can prolong earnings growth,
Financial Planning. New York, 1-4 (Apr. 1, 1999) (hereinafter “Longo”).
We AFFIRM and enter NEW GROUNDS of rejection pursuant to 37
C.F.R. § 41.50(b).

Appeal 2011-012007
Application 09/880,170

4
ISSUES
Did the Examiner err in asserting that claims 1, 2, 4, 5, 7, 11-20, 36,
39-41, and 43-48 are properly rejected based on 35 U.S.C. § 103(a) as being
unpatentable over Corrin in view of Longo. For claim 1, the issue turns on
whether Corrin discloses a current performance planning table and a
findings overview report. For claim 46, the issue turns on whether Corrin
discloses the limitations listed for claim 1 and additionally discloses a
summary findings report. For claim 9, the issue turns on whether the
combination discloses the withdrawal strategy further comprising
designating when and how to withdraw from taxable, 401K, traditional IRA,
and Roth IRA accounts.

ANALYSIS
Independent Claim 1
We are not persuaded the Examiner erred in asserting that a
combination of Corrin and Longo renders obvious independent claim 1
(App. Br. 6-12; Reply Br. 2-6). Appellants assert that the table in Corrin
does not disclose
providing, using the display, a current performance
planning table, wherein said table allows for assessing
approximate current yield and total return information in order
to determine which holdings of said assets provide cash flow
versus growth required to meet said in-retirement goals, and
further wherein said current performance planning table
includes information on each asset’s annual income, 1-year and
5-year total returns, and current value,

as recited in independent claim 1, because (1) Corrin only displays results
for portfolios, and not assets (App. Br. 7-9; Reply Br. 4-5), and (2) Corrin
Appeal 2011-012007
Application 09/880,170

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does not display “current performance planning table includ[ing]
information on each asset’s annual income, 1-year and 5-year total returns,
and current value” (App. Br. 10). However, paragraphs [0144] and [0346]
of Corrin disclose displaying at least an Expected Returns Table, a Quarterly
Returns Chart, and a Calculate Returns Table. Even if Corrin does not
disclose the information specifically set forth in independent claim 1, the
information contained in the recited current performance planning table is
merely an arrangement of data, and the Appellants are essentially asserting
that content of data elements is distinguishable from the content disclosed in
Corrin’s tables. The United States Patent and Trademark Office (USPTO)
need not give patentable weight to descriptive material absent a new and
unobvious functional relationship between the descriptive material and the
substrate. See In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983; In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); and In re Lowry, 32 F.3d 1579,
1583-84 (Fed. Cir. 1994). In the instant case, that the recited current
performance planning table includes information on each asset’s annual
income, 1-year and 5-year total returns, and current value is merely data that
is being provided. The specifics of the assets do not provide any functional
relationship to the method step of “providing, using the display, a current
performance planning table,” and thus is directed to non-functional
descriptive material. The asset information is analogous to printed matter,
since they are simply directed to the underlying data in the table. See In re
Lowry, 32 F.3d at 1583.
A similar analysis is also applicable to the alleged absence of (1)
likelihood that a priority goal will be met is displayed as a percentage and
(2) an asset drawn down schedule from the investment advisory report
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displayed at paragraphs [0010] and [0011] of Corrin (App. Br. 10-11; Reply
Br. 6-8).
Appellants assert that
the specific limitations regarding the asset drawn down
schedule can be used in forecasting and investment strategy.
As such, it is not just “information/data which can easily be
included in an investment advisory report of Corrin without
altering/changing the system of Corrin” as claimed on page 12
of the final Office Action. Corrin is drawn to a different
investment strategy than the claimed method, as Corrin
attempts to evaluate “the investor’s current saving and
investment strategy” in preparation for retirement. Corrin ¶
[0028]. Changing the “information/data” would change the
strategy, and thus Corrin teaches away from such modifications

(App. Br. 12). However, altering a strategy does not itself constitute a
teaching away, especially absent any showing by Appellants that the Corrin
reference criticizes, discredits, or discourages using additional
information/data in evaluating an investor’s current saving and investment
strategy. “The prior art’s mere disclosure of more than one alternative does
not constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
As several of our findings and rationales differ from those set forth by
the Examiner, we denominate this a NEW GROUND of rejection under 35
U.S.C. § 103(a). See 37 C.F.R. § 41.50(b).

Independent Claim 46
We are not persuaded the Examiner erred in asserting that a
combination of Corrin and Longo render obvious independent claim 46
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(App. Br. 12-13; Reply Br. 9-10). In addition to the arguments raised by the
Appellants for the rejection of claim 1, which we have already addressed
above, Appellants additionally assert that Corrin does not disclose
“‘providing, using a computer, a summary of findings report, wherein the
summary of findings report shows the likelihood for meeting the estate goal,
a best case estate result, a worst case estate result, and an expected case
estate result’” (App. Br. 12). Again, paragraphs [0010] and [0011] of Corrin
disclose providing investors with an investment advisory report, and the
contents of the report constitute non-functional descriptive material.
As several of our findings and rationales differ from those set forth by
the Examiner, we denominate this a NEW GROUND of rejection under 35
U.S.C. § 103(a). See 37 C.F.R. § 41.50(b).

Dependent Claim 9
We are not persuaded the Examiner erred in asserting that a
combination of Corrin, Longo, and Official Notice render obvious dependent
claim 9 (App. Br. 13-14; Reply Br. 10-11). Appellants assert that Corrin
teaches away from being modified to include “designating when and how
much to withdraw from taxable, 401K, traditional IRA, and Roth IRA
accounts,” as recited in dependent claim 9, because Corrin discloses that
“most investors do not want to be bothered with entering volumes of data
into a software program or web site” (Reply Br. 11). We are unclear as to
how an aversion to data entry teaches away from implementing a withdrawal
strategy.

Appeal 2011-012007
Application 09/880,170

8
DECISION
The decision of the Examiner to reject claims 1, 2, 4, 5, 7, 9, 11-20,
36, 39-41, and 43-48 is AFFIRMED.
This decision contains several new grounds of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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