Visa U.S.A. Inc.

Patent Trials and Appeals Board

Sep 16, 2020

2020002878 (P.T.A.B. Sep. 16, 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.
14/275,715 05/12/2014 Patrick Gauthier 80083-907119 1055
66945 7590 09/16/2020
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
FELTEN, DANIEL S
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
09/16/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK GAUTHIER, BRIAN MAW, PATRICK FAITH,
and
BARBARA PATTERSON
Appeal 2020-002878
Application 14/275,715
Technology Center 3600
Before JOSEPH L. DIXON, DAVID M. KOHUT, and
JON M. JURGOVAN, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 4, 6, 7, 9–11, 15, 16, and 19–25.2
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(a). Appellant identifies the real party in interest as Visa
U.S.A. Inc. (Appeal Br. 3.)
2 Throughout this Decision we refer to the Final Rejection mailed June 10,
2019 (“Final Act.”), the Appeal Brief filed September 25, 2019 (“Appeal
Br.”), the Examiner’s Answer mailed January 6, 2020 (“Ans.”), and the
Reply Brief filed March 5, 2020 (“Reply Br.”).
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2
INVENTION
The present invention relates to a system and method for “conducting
financial transactions using secured account numbers from portable
proximity consumer devices” and “using [the] secured account number for
processing proximity types of wireless financial transactions.” (Spec. ¶ 9;
Abstract.)
Independent claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method for detecting unauthorized interception of
wirelessly transmitted account information, the method
comprising:
receiving, by a server computer associated with a
processing network, an authorization request message for a
transaction, the authorization request message including an
account number;
determining, by the server computer, that the account
number is a secured account number dedicated for wireless
transmission in proximity transactions and not used in non-
proximity transactions, wherein the secured account number is
associated with a real account number under the same account,
and is different than the real account number which is used for
non-proximity transactions;
determining, by the server computer, that the
authorization request message including the secured account
number dedicated for wireless transmission did not originate
from a proximity type of transaction based on a transaction type
identifier in the authorization request message indicating
whether the transaction is a proximity transaction;
determining unauthorized interception of the secured
account number has occurred, based on the determination that
the authorization request message did not originate from the
proximity type of transaction; and
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denying the transaction based on the determination that
the authorization request message including the secured account
number did not originate from the proximity type of transaction.

(Appeal Br. 15–18 (Claims Appendix).)
REJECTION
Claims 1, 3, 4, 6, 7, 9–11, 15, 16, and 19–25 stand rejected under
35 U.S.C. § 101 as directed to patent-ineligible subject matter. (Final Act.
3–4.)

ANALYSIS
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Accordingly, we review the Examiner’s § 101 determinations concerning
patent eligibility under this standard.
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
The 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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
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(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 218–19 (“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’ 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” (Diehr, 450 U.S. at 191); “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 (1853)));
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
Supreme 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 Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
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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. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula 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 citation
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. (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.
The PTO published revised guidance on the application of § 101.
USPTO’s Memorandum, 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (January 7, 2019) (“Revised
Guidance”).3 Under that guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of

3 The Office issued a further memorandum on October 17, 2019 (“October
2019 Memorandum”) clarifying guidance of the January 2019 Memorandum
in response to received public comments. See
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.
pdf. Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Revised Guidance at 51;
see also October 2019 Memorandum at 1.
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abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a)–(c), (e)–(h) (9th ed., Rev.
08.2017, 2018)).

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, 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.

See Revised Guidance.
Appellant argues claims 1, 3, 4, 6, 7, 9–11, and 22–25 together,
submitting arguments for independent claim 1. (See Appeal Br. 7; Reply Br.
2–5.) As a result, we select independent claim 1 as the representative claim
for the group and address Appellant’s arguments thereto. See 37 C.F.R.
§ 41.37(c)(1)(iv). Appellant also groups claims 15, 16, and 19–21 together,
arguing independent claim 15 for reasons similar to claim 1. (See Appeal
Br. 7, 13.)
Step 1 of the Revised Guidance
Independent claim 1, as a “method” claim, recites one of the
enumerated categories of statutory subject matter in 35 U.S.C. § 101,
namely, a process. The issue before us is whether this claim is directed to a
judicial exception without significantly more.

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Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A, Prong 1 of the Revised Guidance
The first Prong of Step 2A under the Revised Guidance is to
determine whether the claim recites a judicial exception including
(a) mathematical concepts; (b) certain methods of organizing human
activity; and (c) mental processes. Revised Guidance, 84 Fed. Reg. at 51–
52.
The Examiner determines that claim 1 is “directed to an abstract idea
of processing payment transactions using secure account numbers” thereby
reciting “a certain method of organizing human activity wherein transactions
are considered legal interactions.” (Final Act. 3–4.)
Appellant disagrees with the Examiner’s characterization of the claim,
and argues the rejection overgeneralizes and oversimplifies the claimed
subject matter. (Appeal Br. 7–8.)
Appellant’s arguments do not persuade us that the Examiner erred in
finding that claim 1 recites an abstract idea, and we concur with the
Examiner’s conclusion that the claim recites an abstract idea. (Final Act. 3–
4.) As the Examiner finds, the emphasized portions of claim 1, reproduced
above, recite elements that fall within the abstract idea grouping of certain
methods of organizing human activity by processing payment transactions
based on account numbers and transaction identifiers. (See id.) In
particular, claim 1 recites steps of: receiving an authorization request
message for a transaction, the authorization request message including (1) a
particular account number (a secured account number dedicated for wireless
transmission in proximity transactions) and (2) a transaction type identifier
(indicating whether the transaction is a proximity transaction); and denying
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the transaction when the transaction type identifier indicates that the
authorization request message did not originate from a proximity type of
transaction. These steps relate to an abstract idea grouping of “[c]ertain
methods of organizing human activity” as described in the Revised
Guidance—which characterizes such methods of organizing human activity
as including, inter alia, “fundamental economic principles or practices
(including . . . mitigating risk); commercial or legal interactions (including
. . . sales activities or behaviors; business relations).” Revised Guidance, 84
Fed. Reg. at 52. Thus, we agree with the Examiner that claim 1 recites an
abstract idea.
We now turn to Step 2A, Prong 2, of the Revised Guidance to
determine whether the abstract idea is integrated into a practical application.
See Revised Guidance, 84 Fed. Reg. at 54–55.
Step 2A, Prong 2 of the Revised Guidance
Under Revised Step 2A, Prong Two of the Revised Guidance, we
recognize that claim 1 includes additional elements such as a server
computer and a processing network. Furthermore, our review of Appellant’s
Specification finds that the terms “processing network” and “server
computer” are nominal. Appellant’s Specification indicates that the
“processing network” and “server computer” (see Spec. ¶¶ 35–36) of claim 1
do not recite specific types of additional elements or their operations. As a
result, these additional elements are not enough to distinguish the steps of
claim 1 from describing certain methods of organizing human activity.
Appellant argues claim 1 recites additional elements that integrate the
exception into a practical application because “the claimed technique is used
to detect unauthorized interception of wirelessly transmitted account
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information, and to prevent real account information from being intercepted
by an unauthorized proximity reader.” (Appeal Br. 7; see also Appeal Br. 8,
12; Reply Br. 5.) As such, Appellant argues “claim 1 should be
characterized as being directed to the practical application of ‘detecting
unauthorized interception of wirelessly transmitted account information.’”
(Appeal Br. 8; see also Reply Br. 2–3.)
Appellant’s arguments are not persuasive because the limitations
recited in claim 1 do not detect unauthorized interception of wirelessly
transmitted account information, as Appellant argues. (See Appeal Br. 7–8;
Reply Br. 4–5.) The limitations recited in claim 1 merely detect whether an
authorization request message includes a transaction type identifier whose
transaction type does not match an account number’s transaction type. In
particular, claim 1 denies a transaction when a transaction type identifier (in
an authorization request message) indicates a non-proximity transaction,
while an account number (in the authorization request message) is of a type
not to be used in non-proximity transactions. That is, claim 1 denies a
transaction when two pieces of information (transaction types as indicated
by a transaction type identifier and by a secured account number) do not
match. “[C]ollecting data . . . recognizing certain data within the collected
data set, and . . . storing that recognized data” is an abstract idea because
“[t]he concept of data collection, recognition, and storage is undisputedly
well-known. . . . banks have, for some time, reviewed checks, recognized
relevant data such as the amount, account number, and identity of account
holder, and stored that information in their records.” Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014); see also Intellectual Ventures I LLC v. Capital One Bank
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(USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (“tracking financial
transactions to determine whether they exceed a pre-set spending limit” is an
abstract idea “not meaningfully different from the ideas found to be abstract
in other cases . . . involving methods of organizing human activity”);
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
(Fed. Cir. 2017) (claims reciting processing of payments using remote order
codes entered at point-of-sale terminals are “directed to an abstract idea . . .
[of] ‘local processing of payments for remotely purchased goods’”).
We recognize that claim 1 recites “determining unauthorized
interception of the secured account number has occurred,” however, the
steps recited in claim 1 do not perform detection of wireless payment card
skimming or detection of surreptitious interrogation of contactless cards.
No details regarding skimming detection or detection of unauthorized
interrogation are recited in claim 1. Claim 1’s determining (i.e.,
“determining unauthorized interception of the secured account number has
occurred, based on the determination that the authorization request message
did not originate from the proximity type of transaction”) does not actually
detect unauthorized interception of the secured account number; rather,
claim 1’s determining step merely presumes that an unauthorized account
interception must have occurred because a transaction type identifier does
not indicate a proximity transaction.4

4 We further note the claimed information (the “transaction type identifier”
and the “authorization request message”) is broadly recited in claim 1
without specifying, for example, that “it is [a] POS [(point-of-sale)] terminal
that creates the authorization request message and provides the transaction
type identifier” (as Appellant argues, see Reply Br. 4).
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We are therefore unpersuaded by Appellant’s arguments that claim 1
is “able to detect unauthorized interception of wirelessly transmitted account
information” or that (in contrast to BASCOM) claim 1 provides “a
mechanism to detect whether account information has been wirelessly
intercepted by an unauthorized party.” (Appeal Br. 9–10 (citing BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1343
(Fed. Cir. 2016)); see also Appeal Br. 7–8; Reply Br. 2–3.) The preamble of
claim 1 (“method for detecting unauthorized interception of wirelessly
transmitted account information”) and the claimed determining
(“determining unauthorized interception of the secured account number”)
are broadly worded, functional limitations that do not meaningfully limit or
specify how the claimed invention performs those functions. Thus, claim
1’s limitations fail to capture how the claim would “improve the security of
proximity systems that transmit account information wirelessly” or how “the
use of the secured account number allows unauthorized interception of
wirelessly transmitted account information to be detected” as Appellant
argues. (See Reply Br. 5; see also Appeal Br. 7–8, 10, 12; Reply Br. 4.)
Claim 1’s limitations also fail to capture how the claim would “prevent[]
sensitive information such as a real account number from being wirelessly
intercepted by a proximity reader” as Appellant argues. (Appeal Br. 10; see
also Appeal Br. 8, Reply Br. 5.) Claim 1’s recitations of a real account
number (i.e., “secured account number is associated with a real account
number under the same account, and is different than the real account
number which is used for non-proximity transactions”) do not preclude
wireless interception and skimming of a real account number by proximity
readers. We are similarly unpersuaded by Appellant’s argument that claim 1
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recites “computer security concepts . . . [that] improve the security of
proximity systems that transmit account information wirelessly” and should
be patent eligible for “improving security under Ancora Technologies.”
(Appeal Br. 10 (citing Ancora Technologies, Inc. v. HTC America, Inc., 908
F.3d 1343, 1348 (Fed. Cir. 2018)).)
Appellant also argues claim 1 is similar to the claims in DDR because
claim 1 addresses and solves “a wireless communication security problem
rooted in computer technology”—the problem of “how to detect
unauthorized interception of wirelessly transmitted account information.”
(Appeal Br. 11 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014)).) We remain unpersuaded by Appellant’s
argument. Although the problem mentioned by Appellant (how to detect
unauthorized interception of wirelessly transmitted account information) is a
technical problem, Appellant’s claim 1 does not solve this problem. As
discussed supra, the limitations of claim 1 do not provide a technical
solution to wireless card skimming, and fail to capture how the claim would
detect unauthorized interception of wirelessly transmitted account
information (as Appellant argues).
We therefore agree with the Examiner that approving or denying
transactions based on filtered information and dissimilar transaction types
(as indicated by account numbers and transaction type identifiers, as
claimed) does not integrate the recited abstract idea into a practical
application. (Final Act. 2, 4; Ans. 5–6.)
Thus, based on our analysis under the Revised Guidance, we agree
with the Examiner and find that claim 1 is directed to an abstract idea. (Id.)
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As a result, we focus our attention on Step 2B of the Alice two-step
framework.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance

Step 2B of the Alice two-step framework requires us to determine
whether any element, or combination of elements, in the claim is sufficient
to ensure that the claim amounts to significantly more than the judicial
exception. Alice, 573 U.S. at 221; see also Revised Guidance, 84 Fed. Reg.
at 56. As discussed above, claim 1 includes additional elements such as a
“server computer” and a “processing network.” However, the additional
elements of claim 1, when considered individually and in an ordered
combination, correspond to nothing more than generic and well-known
components used to implement the abstract ideas. (See Spec. ¶¶ 35–36.) In
other words, we find that the additional elements, as claimed, are well-
understood, routine, and conventional and “behave exactly as expected
according to their ordinary use.” See In re TLI Commc’ns LLC Patent Litig.,
823 F.3d 607, 615 (Fed. Cir. 2016). Thus, implementing the abstract idea
with these generic and well-known components “fail[s] to transform that
abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 221.
Appellant argues claim 1 is “patent eligible for the non-routine and
unconventional nature of the claimed technique to use a secured account
number dedicated for wireless proximity transactions for detecting
unauthorized interception of wirelessly transmitted account information.”
(Appeal Br. 11–13 (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1368–69
(Fed. Cir. 2018); USPTO Memorandum, “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
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Eligibility Decision (Berkheimer v. HP, Inc.),” published on April 19,
2018).) Appellant’s argument is not persuasive, as Appellant’s support for
the argument relies upon the contention that claim 1 enables detection of
unauthorized interception of wirelessly transmitted account information.
(See id. at 12–13.) As discussed supra, we are not persuaded by Appellant’s
contention that claim 1 enables detection of unauthorized interception of
wirelessly transmitted account information.
Appellant also argues, the Examiner has not provided support for the
finding that using a secured account number dedicated for wireless
proximity transactions, was routine and conventional. (See id.) The
Examiner has noted, however, that it is known to customize accounts for use
in particular financial transactions. (Ans. 6 (citing Alice, 573 U.S. at 208,
217–18 (describing use of shadow accounts, and allowing only those
transactions that do not result in the value of a shadow debit record being
less than the value of a shadow credit record)); Final Act. 3; see also
Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266,
1269, 1277–78, 1280 (Fed. Cir. 2012) (patent claimed “administering and
tracking the value of life insurance policies in separate accounts” and was
directed to an abstract idea).)
Therefore, we agree with the Examiner that claim 1 does not provide
significantly more than the abstract idea itself. Because claim 1 is directed
to the abstract idea of certain methods of organizing human activity and does
not provide significantly more than the abstract idea itself, we agree with the
Examiner that claim 1 is ineligible for patenting and affirm the Examiner’s
§ 101 rejection of claim 1, and grouped claims 3, 4, 6, 7, 9–11, and 22–25.
We also sustain the Examiner’s § 101 rejection of independent claim 15
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argued for the same reasons as claim 1, and the rejection of grouped claims
16 and 19–21. (Appeal Br. 13.)
DECISION SUMMARY
The Examiner’s rejection of claims 1, 3, 4, 6, 7, 9–11, 15, 16, and 19–
25 under 35 U.S.C. § 101 is AFFIRMED.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1, 3, 4, 6, 7,
9–11, 15, 16,
19–25
101 Eligibility
1, 3, 4, 6, 7,
9–11, 15, 16,
19–25

FINALITY AND 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)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED