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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 223 1 3- 1 450 
www.uspto.gov 



FIRST NAMED INVENTOR | ATTORNEY DOCKET NO. | CONFIRMATION NO. [ 



APPLICATION NO. 



FILING DATE 



10/077,174 



21586 



02/15/2002 



7590 09/22/2004 

VINSON & ELKINS, L.L.P. 
1001 FANNIN STREET 
2300 FIRST CITY TOWER 
HOUSTON, TX 77002-6760 



Austin M. Long III 



ALI5 15/4-3 



9524 



EXAMINER 



] 



ART UNIT 



SNAPP, SANDRA S 

n 



PAPER NUMBER 



3624 



DATE MAILED: 09/22/2004 



Please find below and/or attached an Office communication concerning this application or proceeding. 



PTO-90C (Rev. 10/03) 



X 



Office Action Summary 



Application No. 

10/077,174 



Examiner 

Sandra Snapp 



Applicant(s) 

LONG ETAL 



Art Unit 

3624 



- The MAILING DATE of this communication appears on the cover sheet with the correspondence address - 
Period for Reply 

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM 
THE MAILING DATE OF THIS COMMUNICATION. 

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed 
after SIX (6) MONTHS from the mailing date of this communication. 

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely. 

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication. 

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133). 
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any 
earned patent term adjustment. See 37 CFR 1.704(b). 

Status 

1 )[3 Responsive to communication(s) filed on 10 May 2002 . 
2a)D This action is FINAL. 2b)S This action is non-final. 

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is 

closed in accordance with the practice under Ex parte Quay/e, 1935 CD. 1 1 , 453 O.G. 213. 

Disposition of Claims 

4) [3 Claim(s) 1-15 is/are pending in the application. 

4a) Of the above claim(s) is/are withdrawn from consideration. 

5) D Claim(s) is/are allowed. 

6) ^ Claim(s) 1-15 is/are rejected. 

7) D Claim(s) is/are objected to. 

8) D Claim(s) are subject to restriction and/or election requirement. 

Application Papers 

9) D The specification is objected to by the Examiner. 

10)E3 The drawing(s) filed on 15 February 2002 is/are: a)D accepted or b)^ objected to by the Examiner. 

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a). 

Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1 .121 (d). 
1 1 )□ The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-1 52. 

Priority under 35 U.S.C. § 119 

12)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f). 
a)D All b)D Some * c)D None of: 

1 .□ Certified copies of the priority documents have been received. 

2.Q Certified copies of the priority documents have been received in Application No. . 



3.Q Copies of the certified copies of the priority documents have been received in this National Stage 
application from the International Bureau (PCT Rule 17.2(a)). 
* See the attached detailed Office action for a list of the certified copies not received. 



Attachment(s) 

1) S Notice of References Cited (PTO-892) 

2) O Notice of Draftsperson's Patent Drawing Review (PTO-948) 

3) □ Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 

Paper No(s)/Mail Date . 



4) □ Interview Summary (PTO-413) 

Paper No(s)/Mail Date. . 

5) EH Notice of Informal Patent Application (PTO-1 52) 

6) □ Other: . 



U.S. Patent and Trademark Office 
PTOL-326 (Rev. 1-04) 



Office Action Summary 



Part of Paper NoVMail Date 09172004 



' Application/Control Number: 1 0/077, 1 74 Page 2 

Art Unit: 3624 



DETAILED ACTION 



Drawings 

The drawings are objected to because there is only one figure, and as such, it should not 
have a figure legend. See 37 C.F.R. 1.84 (u). Corrected drawing sheets in compliance with 37 
CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. 
Any amended replacement drawing sheet should include all of the figures appearing on the 
immediate prior version of the sheet, even if only one figure is being amended. The figure or 
figure number of an amended drawing should not be labeled as "amended." If a drawing figure is 
to be canceled, the appropriate figure must be removed from the replacement sheet, and where 
necessary, the remaining figures must be renumbered and appropriate changes made to the brief 
description of the several views of the drawings for consistency. Additional replacement sheets 
may be necessary to show the renumbering of the remaining figures. The replacement sheet(s) 
should be labeled "Replacement Sheet" in the page header (as per 37 CFR 1.84(c)) so as not to 
obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the 
applicant will be notified and informed of any required corrective action in the next Office 
action. The objection to the drawings will not be held in abeyance. 

Specification 

The figure description on page 7 of the specification is objected to because it should not 
be directed to "Fig. 1" but instead to "the Figure" since there is only a single figure. 



Application/Control Number: 1 0/077, 1 74 Page 3 

Art Unit: 3624 

Claim Rejections - 35 USC § 112 
The following is a quotation of the second paragraph of 35 U.S.C. 112: 

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the 
subject matter which the applicant regards as his invention. 

Claims 1-15 are rejected under 35 U.S.C. 1 12, second paragraph, as being indefinite for 
failing to particularly point out and distinctly claim the subject matter which applicant regards as 
the invention. 

Claims 1,14 and 15 are indefinite because it is unclear whether the "private investment 
portfolio" and the "private market portfolio" are the same thing? If so, consistent language 
should be used to avoid confusion. The phrases "the internal rate" and "the private investment 
characteristics" lack proper antecedent basis. Since this is the first occurrence of such phrases, 
they should not be preceded by "the." They and x of the equation are not defined. Also, the 

phrase, "and a value for R^, the coefficient of determination" is confusing. Does the Applicant 

mean that the "value for R2, the coefficient of determination" is also being determined as step ( c 
) identifies, or is there some other purpose for the phrase? It is confusing and clarification is 
required. 

Claim 2 is indefinite because it is unclear whether "a public market" as claimed in the last 
line of claim 2 is the same as "the public market" of claim 1, line 3 or a different public market. 
If they are the same, then the public market in claim 2 should be preceded by "the" or "said." 

Claim 6 is indefinite because it is unclear whether "a private investment portfolio" as 
claimed in the second line of claim 6 is the same as "a private investment portfolio" of claim 1, 



Application/Control Number: 1 0/077, 1 74 Page 4 

Art Unit: 3624 

line 3 or a different private investment portfolio. If they are the same, then the private 
investment portfolio in claim 6 should be preceded by "the" or "said." 

Claim 10 is indefinite because it is unclear what the phrase "of funds of funds" means. 

Claims 2-13 are indefinite because they depend from rejected base claim 1. 



Claim Rejections - 35 USC §101 
Claims 1-13 and 15 are rejected under 35 U.S.C. 101 because the claimed invention is 
directed to non-statutory subject matter. Claims 1-13 and 15 are directed to non-statutory subject 
matter because they lack any recitation of technology in the body of the claims, which is required 
in order to meet the statutory requirements. The Patent Office had taken the position that some 
form of technology must be claimed in the body of the claim. The Board of Patent Appeals and 
Interferences has stated that claims lacking any technology are "nothing more than [an] abstract 
idea which is not tied to any technological art and is not a useful art as contemplated by the 
Constitution." Ex parte Bowman, 61 USPQ2d 1669, 1671 (Bd. Pat. App. & Inter. 2001) 
(Unpublished). While it is understood that the Bowman case is not precedential, it is cited herein 
for its content and reasoning. 

Conclusion 

The prior art made of record and not relied upon is considered pertinent to applicant's 
disclosure. Schneider, Ren, Lof et al., Karmali, Luskin et al. and O'Shaughnessy patents are all 
directed to various types of investment management systems. 



i 



Application/Control Number: 10/077,174 



Page 5 



Art Unit: 3624 

Any inquiry concerning this communication or earlier communications from the 
examiner should be directed to Sandra Snapp whose telephone number is 703-305-6940. The 
examiner can normally be reached on Mon.-Thurs. 

If attempts to reach the examiner by telephone are unsuccessful, the examiner's 
supervisor, Vincent Millin can be reached on 703-308-1065. The fax phone number for the 
organization where this application or proceeding is assigned is 703-872-9306. 

Information regarding the status of an application may be obtained from the Patent 
Application Information Retrieval (PAIR) system. Status information for published applications 
may be obtained from either Private PAIR or Public PAIR. Status information for unpublished 
applications is available through Private PAIR only. For more information about the PAIR 
system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR 
system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). 





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SUPERVISORY PATENT EXAMINER 
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