Michel Adar et al.

Patent Trials and Appeals Board

Jan 2, 2020

10980440 - (D) (P.T.A.B. Jan. 2, 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.
10/980,440 11/02/2004 Michel Adar R00160NP 6778
129668 7590 01/02/2020
Invoke / Oracle
30 Wall Street #800
8th Floor
New York, NY 10005
EXAMINER
WAESCO, JOSEPH M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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):
docketing@InvokeIP.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHEL ADAR, EARL STAHL, and
NICOLAS M. BONNET

Appeal 2018-005370
Application 10/980,440
Technology Center 3600

Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Michel Adar et al., appeal
from the Examiner’s decision rejecting claims 32, 35–37, 39, 40, 43–45, 47,
48, 51–53, and 55–58, which are all claims pending in the application.
Appellant has canceled claims 1–31, 33, 34, 38, 41, 42, 46, 49, 50, and 54.
See generally Appeal Br. 16 et seq. (Claims App.). 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 Oracle
International Corporation. Appeal Br. 1.
Appeal 2018-005370
Application 10/980,440

2
CLAIMED SUBJECT MATTER2
The claims are directed to a method and apparatus for optimizing the
results produced by a prediction model. See Spec. 1 (Title). In particular,
Appellant’s disclosed embodiments and claimed invention
relate[] to the general technical area of modeling
interactions between various entities, such as a customer and a
telephone call center. More specifically, it relates to
mechanisms for using the results produced from such modeling
to determine which action to take with respect to a particular
entity, such as a customer having a particular profile.
Spec. 1, ll. 19–23.
Claim 1, reproduced below, is representative of the subject matter on
appeal:
32. A method comprising:
collecting, from one or more servers, context data
generated in response to one or more interactions between the
one or more servers and one or more client devices, the context
data including a plurality of input attributes for a plurality of
predictive models stored in a database;
executing, by a distributed learning system with one or
more processors associated with one or more computer systems,
the plurality of predictive models based on the plurality of input
attributes collected with the context data to generate a plurality
of performance metrics, each respective predictive model of the
plurality of predictive models evaluating a set of one or more
key performance indicators against one or more of the plurality
of input-attributes and providing a respective metric quantifying

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Dec. 1, 2017); Reply Brief (“Reply Br.,” filed May 2, 2018); Examiner’s
Answer (“Ans.,” mailed Mar. 2, 2018); Final Office Action (“Final Act.,”
mailed Apr. 18, 2017); and the original Specification (“Spec.,” filed
Nov. 2, 2004) (claiming benefit of US 60/550,887, filed Mar. 3, 2004).
Appeal 2018-005370
Application 10/980,440

3
the set of one or more key performance indicators according to
a predetermined unit associated with the set of one or more key
performance indicators, the plurality of predictive models
including a first predictive model that provides a first metric
quantifying a first key performance indicator according to a
first unit of measurement and a second predictive model that
provides a second metric quantifying a second key performance
indicator according to a second unit of measurement, the first
key performance indicator representing a goal that is competing
with the second key performance indicator, the first unit of
measurement representing a different unit of measurement than
the second unit of measurement;
wherein at least one predictive model of the plurality of
predictive models evaluates a non-likelihood of acceptance goal
against one or more of the plurality of input attributes;
for each respective possible offer of a plurality of
possible offers, generating, with the one or more processors
associated with the one or more computer systems, a plurality
of normalized metrics based on a normalization of two or more
respective metrics in the plurality of performance metrics across
a plurality of different units represented in all key performance
indicators in the set of one or more key performance indicators
and according to feedback collected from prior executions of
the plurality of predictive models, a value of a normalized
metric for a respective key performance indicator being
different from a value of a metric for the respective key
performance indicator before normalization, wherein
determining the plurality of normalized metrics based on the
normalization of the two or more respective metrics in the
plurality of performance metrics comprises assigning a point
value for each key performance indicator of each predictive
model evaluating input attributes associated with the respective
possible offer, wherein the point value corresponds to a
percentage of a previously determined corresponding goal
metric value that is less valuable than a current goal metric
value, the plurality of normalized metrics including a first
normalized version of the first metric and a second normalized
version of the second metric; and
Appeal 2018-005370
Application 10/980,440

4
generating, with the one or more processors associated
with the one or more computer systems, a combined metric
quantifying a predicted outcome of generating and presenting,
to a particular client device accessing a web server, a web page
including the possible offer, in a series of sequentially
presented web pages, the combine [sic] metric generated using
a total sum of each of the plurality of normalized metrics as
weighted by a corresponding predetermined weight;
comparing, with the one or more processors associated
with the one or more computer systems, the total sum
quantifying each predicted outcome of generating and
presenting different respective web pages including different
respective possible offers in the plurality of possible offers to
select a particular web page with the predicted outcome having
the highest total sum;
generating and presenting, with the one or more
processors associated with the one or more computer systems,
the particular web page in the series of sequentially presented
web pages and updating at least one predictive model of the
plurality of predictive models based, at least in part, on an
interaction with a user with the particular web page.
REJECTION
Claims 32, 35–37, 39, 40, 43–45, 47, 48, 51–53, and 55–58 stand
rejected under 35 U.S.C. § 101 as being directed to a judicial exception (i.e.,
a law of nature, a natural phenomenon, or abstract idea) without significantly
more. Final Act. 4.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 8–15) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the patent-
Appeal 2018-005370
Application 10/980,440

5
ineligible subject matter rejection of claims 32, 35–37, 39, 40, 43–45, 47, 48,
51–53, and 55–58 on the basis of representative method claim 32.3
ISSUE
Appellant argues (Appeal Br. 8–15; Reply Br. 1–4) the Examiner’s
rejection of claim 32 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 32 patent-ineligible under
§ 101?
PRINCIPLES OF LAW
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
Appeal 2018-005370
Application 10/980,440

6
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)
(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’ 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))).
Appeal 2018-005370
Application 10/980,440

7
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[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
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. (citation omitted) (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.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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 (citation omitted). “A claim
Appeal 2018-005370
Application 10/980,440

8
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 Revised Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes);5 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).6
See Revised Guidance 52–53.

5 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
6 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
Appeal 2018-005370
Application 10/980,440

9
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.7
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).

7 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
Appeal 2018-005370
Application 10/980,440

10
Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.8
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.

8 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
Appeal 2018-005370
Application 10/980,440

11
The seven identified “practical application” sections of the MPEP,9
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional

9 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
Appeal 2018-005370
Application 10/980,440

12
elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.10 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional
elements were unconventional in combination).11 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step
2A, we must also evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself).12
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified

10 See, e.g., Diehr, 450 U.S. at 187.
11 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
12 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he 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 v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
Appeal 2018-005370
Application 10/980,440

13
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.13
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the 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). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .

13 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
Appeal 2018-005370
Application 10/980,440

14
See Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 32,
35–37, 39, 40, 43–45, 47, 48, 51–53, and 55–58 and, unless otherwise noted,
we incorporate by reference herein and adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner’s Answer
in response to Appellant’s arguments. We highlight and address specific
findings and arguments regarding claim 1 for emphasis as follows.
Step 1 – Statutory Category
Claim 32, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
Appeal 2018-005370
Application 10/980,440

15
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 32 is directed to “an idea of
itself” (Final Act. 4), and further finds “these [claimed] steps describe the
concept of determining the metrics for key performance indicators by
utilizing predictive models and normalization and updating at least one
predictive model of the plurality of predictive models based at least in part
on an interaction which are Mathematical Relationships/Formulas, another
court-identified abstract idea, as it is relating to a managing relationships of
workers for scheduling purposes.” Final Act. 7.
We conclude claim 32 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 1 recites an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
the “invention relates to the general technical area of modeling interactions
between various entities, such as a customer and a telephone call center.
More specifically, it relates to mechanisms for using the results produced
from such modeling to determine which action to take with respect to a
particular entity, such as a customer having a particular profile.” Spec. 1,
ll. 19–23.
Appellant’s Abstract describes the invention thusly:
Disclosed are methods and apparatus for optimizing
results produced by a predictive model in order to determine
Appeal 2018-005370
Application 10/980,440

16
which action to perform out of a plurality of actions. In an
operation (a), a plurality of goal metrics are provided for a
plurality of possible actions based on a plurality of input
conditions. One or more of the goal metrics are produced by
one or more predictive models. In an operation (b), the plurality
of goal metrics are normalized. In an operation (c), for each
possible action a total of each of the normalized goal metrics
multiplied by a corresponding predetermined weight is
determined. In an operation (d), the totals determined for the
plurality of possible actions are compared to thereby determine
a highest total. In an operation (e), an action selected from the
plurality of possible actions is performed, where the selected
action has the highest total. In one implementation, operations
(a) through (e) are repeated for a plurality of sets of input
conditions, and normalizing the goal metrics for a current set of
input conditions is accomplished by assigning a point value for
each goal metric of each action, wherein the point value
corresponds to the percentage of previously determined
corresponding goal metric values that are less valuable than the
current goal metric value.
Spec. 31 (Abstract).
In TABLE 1 below, we identify in italics the specific claim
limitations in claim 1 that we conclude recite an abstract idea. We
additionally identify in bold the additional (non-abstract) claim limitations
that are generic computer components and techniques, and underline
limitations representing extra or post-solution activity:

Appeal 2018-005370
Application 10/980,440

17
TABLE 1
Independent Claim 32 Revised Guidance
A method comprising: A process (method) is a statutory
subject matter class. See 35
U.S.C. § 101.
[L1] collecting, from one or more
servers, context data generated in
response to one or more interactions
between the one or more servers and
one or more client devices, the context
data including a plurality of input
attributes for a plurality of predictive
models stored in a database;
Collecting information, i.e., data
gathering, is insignificant extra-
solution activity. Revised
Guidance 55, n.31; see also
MPEP § 2106.05(g).
A server is a generic computer
component.
[L2] executing, by a distributed
learning system with one or more
processors associated with one or
more computer systems, the plurality
of predictive models based on the
plurality of input attributes collected
with the context data to generate a
plurality of performance metrics,
“Executing . . . a model . . .
based on . . . input attributes” is
an abstract idea, i.e., an
“observation, evaluation,
judgment, opinion” which could
be performed as a mental
process. See Revised Guidance
52.
To the extent execution of a
model to generate performance
metrics involves mathematical
operations, a mathematical
calculation is an abstract idea.
Revised Guidance 52 and n.12
citing SAP America, Inc. v.
InvestPic, LLC, 898 F.3d 1161,
1163 (Fed. Cir. 2018) (holding
that claims to a “series of
mathematical calculations based
on selected information” are
directed to abstract ideas).
A distributed learning system
with one or more processors
Appeal 2018-005370
Application 10/980,440

18
Independent Claim 32 Revised Guidance
associated with one or more
computer systems represent
conventional computer
components.
each respective predictive model of
the plurality of predictive models
[L3] evaluating a set of one or more
key performance indicators against
one or more of the plurality of input-
attributes and providing a respective
metric quantifying the set of one or
more key performance indicators
according to a predetermined unit
associated with the set of one or more
key performance indicators,
the plurality of predictive models
including a first predictive model that
provides a first metric quantifying a
first key performance indicator
according to a first unit of
measurement and a second predictive
model that provides a second metric
quantifying a second key performance
indicator according to a second unit of
measurement,
the first key performance indicator
representing a goal that is competing
with the second key performance
indicator, the first unit of
measurement representing a different
unit of measurement than the second
unit of measurement;

Evaluating data i.e., comparing,
is an abstract idea, i.e., an
“observation, evaluation,
judgment, opinion,” which could
be performed as a mental
process. See Revised Guidance
52.
wherein at least one predictive model
of the plurality of predictive models

Appeal 2018-005370
Application 10/980,440

19
Independent Claim 32 Revised Guidance
[L4] evaluates a non-likelihood of
acceptance goal against one or more
of the plurality of input attributes;
“Evaluating,” i.e., comparing is
an abstract idea, i.e., an
observation, evaluation,
judgment, opinion, which could
be performed as a mental
process. See Revised Guidance
52.
for each respective possible offer of a
plurality of possible offers,
[L5] generating, with the one or more
processors associated with the one
or more computer systems, a
plurality of normalized metrics based
on a normalization of two or more
respective metrics in the plurality of
performance metrics across a plurality
of different units represented in all key
performance indicators in the set of
one or more key performance
indicators and according to feedback
collected from prior executions of the
plurality of predictive models, a value
of a normalized metric for a respective
key performance indicator being
different from a value of a metric for
the respective key performance
indicator before normalization,

Generating or transmitting
information, e.g., normalized
metrics, is insignificant extra-
solution activity. Revised
Guidance 55, n.31.
wherein determining the plurality of
normalized metrics based on the
normalization of the two or more
respective metrics in the plurality of
performance metrics comprises
[L6] assigning a point value for each
key performance indicator of each
predictive model evaluating input

Assigning a point value for a
key performance indicator, i.e.,
weighting, is an abstract idea,
i.e., an observation, evaluation,
Appeal 2018-005370
Application 10/980,440

20
Independent Claim 32 Revised Guidance
attributes associated with the
respective possible offer,
judgment, opinion, which could
be performed as a mental
process. See Revised Guidance
52.
[L7] wherein the point value
corresponds to a percentage of a
previously determined corresponding
goal metric value that is less valuable
than a current goal metric value, the
plurality of normalized metrics
including a first normalized version of
the first metric and a second
normalized version of the second
metric; and
Assigning a pointy value
corresponding to a percentage of
another number is a
mathematical calculation, and is
an abstract idea. Revised
Guidance 52 and n.12 citing
SAP America, Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1163 (Fed.
Cir. 2018) (holding that claims
to a “series of mathematical
calculations based on selected
information” are directed to
abstract ideas).
[L8] generating, with the one or more
processors associated with the one
or more computer systems, a
combined metric quantifying a
predicted outcome of generating and
Generating or transmitting
information for display is
insignificant extra-solution
activity. Revised Guidance 55,
n.31.
[L9] presenting, to a particular client
device accessing a web server, a web
page including the possible offer, in a
series of sequentially presented web
pages,
“Presenting” information for
display, e.g., a web page, is
insignificant extra-solution
activity. Revised Guidance 55,
n.31.
[L10] the combine[d] metric
generated using a total sum of each of
the plurality of normalized metrics as
weighted by a corresponding
predetermined weight;
“Generating” a metric using a
total sum is a mathematical
calculation, and is an abstract
idea. Revised Guidance 52 and
n.12 citing SAP America, Inc. v.
InvestPic, LLC, 898 F.3d 1161,
1163 (Fed. Cir. 2018) (holding
that claims to a “series of
mathematical calculations based
Appeal 2018-005370
Application 10/980,440

21
Independent Claim 32 Revised Guidance
on selected information” are
directed to abstract ideas).
[L11] comparing, with the one or
more processors associated with the
one or more computer systems, the
total sum quantifying each predicted
outcome of generating and presenting
different respective web pages
including different respective possible
offers in the plurality of possible offers
to select a particular web page with
the predicted outcome having the
highest total sum;
Comparing quantities is an
abstract idea, i.e., an
observation, evaluation,
judgment, opinion, which could
be performed as a mental
process. See Revised Guidance
52.
[L12] generating and presenting,
with the one or more processors
associated with the one or more
computer systems, the particular
web page in the series of sequentially
presented web pages and
Generating and presenting
information, e.g., a web page, is
insignificant extra-solution
activity. Revised Guidance 55,
n.31.
[L13] updating at least one
predictive model of the plurality of
predictive models based, at least in
part, on an interaction with a user
with the particular web page.
Updating a model is an abstract
idea, i.e., an observation,
evaluation, judgment, opinion,
which could be performed as a
mental process. See Revised
Guidance 52.
Appeal Br. 16 (Claims App.).
Under the broadest reasonable interpretation standard,14 we conclude
limitations L1 through L13 recite steps that would ordinarily occur when

14 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
Appeal 2018-005370
Application 10/980,440

22
optimizing results produced by a predictive model in order to determine
which action to perform out of a plurality of actions. See Final Act. 4–7.
For example, in this context, “executing . . . predictive models based on the
. . . input attributes collected with the context data to generate . . .
performance metrics” is an operation that generally occurs when modeling
interactions between various entities, such as a customer and a telephone call
center, and then using the results produced from such modeling to determine
which action to take with respect to a particular entity, e.g., a customer
having a particular profile, whether initiated person-to-person, on paper, or
using a computer.
We determine that claim 32, overall, recites a mental process that may
also be performed by pen and paper. This type of activity, i.e., determining
actions to take based upon modeling and analysis of performance metrics, as
recited in limitations L1 through L13 of claim 32, for example, and aside
from any computer-related aspects, includes longstanding conduct that
existed well before the advent of computers and the Internet, and could be
carried out by a human with pen and paper. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson.”).15

words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
15 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
Appeal 2018-005370
Application 10/980,440

23
Thus, under Step 2A(i), we generally agree with the Examiner that
claim 32 recites an abstract idea, and more particularly, under our Revised
Guidance, we conclude claim 32 recites a judicial exception of determining
actions to take based upon modeling and analysis of performance metrics,
i.e., a mental process, and thus is an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a judicial exception, as we conclude
above, we proceed to the “practical application” Step 2A(ii) in which we
determine whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
As to the specific limitations, and referring TABLE 1, above, we find
limitations L2–L4, L6, L7, L10, L11, and L13 recite abstract ideas, and
limitation L1 recites insignificant data gathering. See MPEP § 2106.05(g).
Data gathering, as performed by the steps or function in Appellant’s claims,
is a classic example of insignificant extra-solution activity. See, e.g., In re

842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
Appeal 2018-005370
Application 10/980,440

24
Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom, Bilski v.
Kappos, 561 U.S. 593 (2010).
We also find limitations L5, L8, L9, and L12 recite insignificant post
solution activity. The Supreme Court guides that the “prohibition against
patenting abstract ideas ‘cannot be circumvented by’ . . . adding
‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11 (quoting
Diehr, 450 U.S. at 191–92). On this record, we are of the view that
Appellant’s claims do not operate the recited generic computer components
in an unconventional manner to achieve an improvement in computer
functionality. See MPEP § 2106.05(a).
We find each of limitations L1 through L13 of claim 32 either recite
abstract ideas, data gathering, or extra-solution activity, as identified in Step
2A(i), supra, and none of the limitations integrate the judicial exception of
determining actions to take based upon modeling and analysis of
performance metrics into a practical application as determined under one or
more of the MPEP sections cited above. The claim as a whole merely uses
instructions to implement the abstract idea on a computer or, alternatively,
merely uses a computer as a tool to perform the abstract idea.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see
also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
Appeal 2018-005370
Application 10/980,440

25
2016) (“Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
particular field, stating those functions in general terms, without limiting
them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.”).
Therefore, the claim as a whole merely uses instructions to implement
the abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea. Thus, on this record, Appellant has not
shown an improvement or practical application under the guidance of MPEP
section 2106.05(a) (“Improvements to the Functioning of a Computer or to
Any Other Technology or Technical Field”) or section 2106.05(e)(“Other
Meaningful Limitations”). Nor does Appellant advance any arguments in
the Brief(s) that are directed to the Bilski machine-or-transformation test,
which would only be applicable to the method (process) claims on appeal.
See MPEP §§ 2106.05(b) (Particular Machine) and 2106.05(c) (Particular
Transformation).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus claim 32 is directed to the judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a judicial exception, and not integrated
into a practical application, as we conclude above, we proceed to the
“inventive concept” step. For Step 2B we must “look with more specificity
at what the claim elements add, in order to determine ‘whether they identify
an “inventive concept” in the application of the ineligible subject matter’ to
which the claim is directed.” Affinity Labs, 838 F.3d at 1258.
Appeal 2018-005370
Application 10/980,440

26
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S.
at 77–79). As stated in the Revised Guidance, many of the considerations to
determine whether the claims amount to “significantly more” under Step 2
of the Alice framework are already considered as part of determining
whether the judicial exception has been integrated into a practical
application. Revised Guidance at 56. Thus, at this point of our analysis, we
determine if the claims add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field, or simply appends well-understood, routine, conventional activities at
a high level of generality. Id.
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
Appeal 2018-005370
Application 10/980,440

27
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea16; mere instructions to implement an
abstract idea on a computer17; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.18
With respect to this step of the analysis, Appellant argues, “[t]he
claims recite various technical limitations that, when considered individually
or in combination, are directed to improvements in distributed, machine-
learning systems to optimize the output of predictive models.” Appeal
Br. 10. Appellant further argues:
The claim limitations . . . when considered individually
or as an ordered combination, clearly involve an inventive
concept beyond merely collecting, analyzing, and presenting
information. The specific ordered combination of claim
limitations involves a distributed learning system that executes
a plurality of prediction models, which may be updated based
on execution feedback. These limitations involve a specific
arrangement to optimize model execution/efficiency of the
predictive models to evaluating competing metrics. This
specific arrangement is analogous to the installation of a
filtering tool at a specific location (i.e., the Internet Service
Provider (ISP) server) in Bascom. Thus, these claims involve an
inventive concept.
Appeal Br. 14.

16 Alice, 573 U.S. at 221–23.
17 Alice, 573 U.S. at 222–23, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer.
18 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust
account balances, and issue automated instructions involves computer
functions that are well-understood, routine, conventional activities).
Appeal 2018-005370
Application 10/980,440

28
Appellant also alleges:
Further, the Examiner’s assertion [of patent ineligibility]
is incorrect. There are many different ways in which web pages
may be presented in sequential order that do not involve
“quantifying each predicted outcome of generating and
presenting different respective web pages including different
respective possible offers in the plurality of possible offers to
select a particular web page with the predicted outcome having
the highest total sum”, as required by claim 32. The claims
therefore involve a specific application of a plurality of
predictive models, which are executed in a distributed learning
environment and updated according to machine-learning
techniques. As highlighted above, the recited limitations
involve multiple technological benefits. Thus, these limitations
involve an inventive concept that “solve a technology-based
problem”.
Appeal Br. 14–15.
Evaluating representative claim 32 under step 2 of the Alice analysis,
for the reasons provided below, we conclude it lacks an inventive concept
that transforms the abstract idea of determining actions to take based upon
modeling and analysis of performance metrics into a patent-eligible
application of that abstract idea.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he 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.
As evidence of the conventional nature of the recited “server,” “web
server,” “distributed learning system with one or more processors associated
with one or more computer systems,” and “client device” in method
Appeal 2018-005370
Application 10/980,440

29
claim 32; and similarly in system claim 40 and non-transitory computer-
readable medium claim 48, the Specification discloses:
FIG. 7 is a block diagram of a general purpose computer
system 700 suitable for carrying out the processing in
accordance with one embodiment of the present invention.
Other computer system architectures and configurations can be
used for carrying out the processing of the present invention.
Computer system 700, made up of various subsystems
described below, includes at least one microprocessor
subsystem (also referred to as a central processing unit, or
CPU) 702. That is, CPU 702 can be implemented by a single-
chip processor or by multiple processors. CPU 702 is a general
purpose digital processor which controls the operation of the
computer system 700. Using instructions retrieved from
memory, the CPU 702 controls the reception and manipulation
of input information, and the output and display of information
on output devices.
Spec. 18, l. 16 – 19, l. 2. See also Spec. 19, l. 3 – 21, l. 19.
As indicated above, Figure 7 of the Drawings discloses conventional
components and techniques:

Appeal 2018-005370
Application 10/980,440

30
“FIG. 7 is a block diagram of a general purpose computer system
suitable for carrying out the processing in accordance with one embodiment
of the present invention.” Spec. 6.19
Thus, because the Specification and Drawings describe the additional
elements in general terms, without describing the particulars, we conclude
the claim limitations may be broadly but reasonably construed as reciting
conventional computer components and techniques, particularly in light of
Appellant’s Specification, as quoted above.20
The MPEP, based upon our precedential guidance, provides additional
considerations with respect to analysis of the well-understood, routine, and
conventional nature of the recited computer-related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words “apply it” (or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do

19 An example of the recited “distributed learning system” is illustrated in
Figure 3, and is described as “illustrating an exemplary distributed learning
system 300 in which techniques of the present invention may be
implemented. Of course, the present invention may be implemented in any
suitable system that implements predictive modeling.” Spec. 8, ll. 18–20.
We interpret this statement as indicating that well-understood, routine, and
conventional components and techniques may be employed to carry out the
functions of the recited distributed learning system.
20 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
Appeal 2018-005370
Application 10/980,440

31
“‘more than simply stat[e] the [judicial exception] while adding
the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. __,
134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
claims that amount to nothing more than an instruction to apply
the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at
1984 (warning against a § 101 analysis that turns on “the
draftsman’s art”) . . . .
In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim
amounted to mere instructions to apply the abstract idea on a
generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984.
The Supreme Court also discussed this concept in an earlier
case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673,
676 (1972), where the claim recited a process for converting
binary-coded decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no
substantial practical application except in connection with a
computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception (e.g., law of nature or
abstract idea) while effectively adding words that “apply it” in a
computer. Id.
MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”).
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a method that includes updating a distributed learning system
based on execution feedback as argued by Appellants (Appeal Br. 14), and
similarly for claims 40 and 48, is simply not enough to transform the patent-
ineligible abstract idea here into a patent-eligible invention under Step 2B.
See Alice, 573 U.S. at 221 (“[C]laims, which merely require generic
Appeal 2018-005370
Application 10/980,440

32
computer implementation, fail to transform [an] abstract idea into a patent-
eligible invention.”).
We conclude the claims fail the Step 2B analysis because claim 32, in
essence, merely recites various computer-based elements along with no
more than mere instructions to implement the identified abstract idea using
the computer-based elements.
Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that each of Appellant’s claims 32, 35–37, 39, 40, 43–45, 47, 48,
51–53, and 55–58, considered as a whole, is directed to a patent-ineligible
abstract idea that is not integrated into a practical application and does not
include an inventive concept. Accordingly, we sustain the Examiner’s § 101
rejection of independent claim 32, and grouped claims 35–37, 39, 40, 43–45,
47, 48, 51–53, and 55–58, which fall therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1–4) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSION
Under our Revised Guidance, governed by relevant case law, claims
32, 35–37, 39, 40, 43–45, 47, 48, 51–53, and 55–58 are patent-ineligible
under 35 U.S.C. § 101, and we sustain the rejection.
Appeal 2018-005370
Application 10/980,440

33
DECISION SUMMARY
Claims
Rejected
35
U.S.C. §
Basis Affirmed Reversed
32, 35–37, 39,
40, 43–45, 47,
48, 51–53, 55–58
101 Subject
Matter
Eligibility
32, 35–37, 39, 40,
43–45, 47, 48,
51–53, 55–58

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