Gary D. Cudak et al.

Patent Trials and Appeals Board

Oct 2, 2019

14017293 - (D) (P.T.A.B. Oct. 2, 2019)

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.
14/017,293 09/03/2013 Gary D. Cudak RPS920130030US1 (164) 2072
50594 7590 10/02/2019
Shutts & Bowen LLP
STEVEN M. GREENBERG
525 Okeechobee Blvd
# 1100
West Palm Beach, FL 33401
EXAMINER
DOSHI, ANKIT B
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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@crgolaw.com
patents@shutts.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GARY D. CUDAK, LYDIA M. DO,
CHRISTOPHER J. HARDEE, and ADAM ROBERTS

Appeal 2019-001238
Application 14/017,293
Technology Center 3700
____________

Before EDWARD A. BROWN, JAMES P. CALVE, and
BEVERLY M. BUNTING, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 8, 10–14, and 16–20.2 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. Appellant identifies the real party in interest as LENOVO
ENTERPRISE SOLUTIONS (SINGAPORE) PTE. LTD. Appeal Br. 2.
2 Claims 1–7, 9, and 15 are cancelled. Appeal Br. (Claims App.).
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CLAIMED SUBJECT MATTER
Claims 8 and 14 are independent claims. Claim 14 illustrates the
claimed subject matter on appeal and is reproduced below with reference
letters added in brackets.
14. A computer program product for managing player
generated content, the computer program product comprising:
a computer readable storage medium having computer
readable program code embodied therewith, the computer
readable program code comprising:
[A] computer readable program code for recording player
generated content for a game playing session into memory of a
computer;
[B] computer readable program code for collecting game
metrics for the game playing session during the game playing
session comprising different accomplishments or milestones
recorded in furtherance of a game goal;
[C] computer readable program code for comparing the
game metrics to one or more pre-stored threshold values; and,
[D] computer readable program code for determining
whether or not to discard the player generated content based upon
the comparison and storing in fixed storage of the computer only
player generated content determined based upon the comparison
not to be discarded, [E] the computer readable program code
further naming the player generated content in the fixed storage
using at least a portion of the game metrics.

Appeal Br. 25–26 (Claims App.).

THE REJECTIONS
Claims 8, 10–14, and 16–20 are rejected under 35 U.S.C. § 101 as
directed to patent ineligible subject matter. Final Act. 2.
Claims 8, 10, 12–14, 16, 18, and 19 are rejected under
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35 U.S.C. § 103 as unpatentable over Thompson (US 2004/0225386 A1,
pub. Nov. 11, 2004) and Lim (US 2013/0288788 A1, pub. Oct. 31, 2013).
Final Act. 6.
Claims 11 and 17 are rejected under 35 U.S.C. § 103 as unpatentable
over Thompson, Lim, and Yabuki (US 2009/0093313 A1, pub. Apr. 9,
2009). Final Act. 8.
Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable over
Thompson, Lim, and McCaffrey (US 2013/0324261 A1, pub. Dec. 5, 2013).
Final Act. 9.

ANALYSIS
Patent Ineligibility of Claims 8, 10–14, and 16–20
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, 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. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219.
Concepts that have been determined to be abstract ideas, and thus
patent-ineligible, include certain methods of organizing human activity, such
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as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski v.
Kappos, 561 U.S. 593 (2010)); mathematical formulas (Parker v. Flook, 437
U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409
U.S. 63, 69 (1972)).
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 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (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 issued revised guidance on the application of § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter “2019 Guidance”). The 2019 Guidance includes
steps 2A and 2B. Under Step 2A, Prong One, of the guidance, we first look
to whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). See id. at 54.
If a claim recites a judicial exception, we proceed to Step 2A, Prong
Two, and determine whether the claim recites additional elements that
integrate the judicial exception into a practical application. See id.; see also
MPEP § 2106.05(a)–(c), (e)–(h).
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Only if a claim both recites a judicial exception and fails to integrate
the judicial exception into a practical application, do we proceed to Step 2B
of the guidance. At this step, we determine whether the claim adds a
specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. See 84 Fed. Reg. 56.

Claim Grouping
Appellant argues the patent eligibility of claims 8, 10–14, and 16–20
as a group. Appeal Br. 8–21. We select claim 14 as representative of the
group, and claims 8, 10–13, and 16–20 stand or fall with claim 14. See 37
C.F.R. § 41.37(c)(1)(iv).

Step One – Statutory Category
Claim 14 recites a computer program product, and, accordingly, is
directed to one of the statutory classes of subject matter eligible for
patenting under 35 U.S.C. § 101 (i.e., a manufacture).

Step 2A, Prong One – Recitation of Judicial Exception
We look to whether claim 14 recites any judicial exception, including
certain groupings of abstract ideas, that is, mathematical concepts, certain
methods of organizing human activities such as a fundamental economic
practice, or mental processes.
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The Examiner determines that the claims recite an abstract idea;
namely, they are directed to managing player generated content merely using
generic computer functions in recording data, recognizing and collecting the
data, and manipulating and organizing the data by a mathematical algorithm.
Final Act. 3–4.
We agree with the Examiner that claim 14 recites an abstract idea.
Claim 14 is directed to a computer program product for managing player
generated content and recites limitations A–E referenced above. Limitation
A recites “recording player generated content for a game playing session.”
The claim does not specify what game it pertains to, or the player generated
content. Under its broadest reasonable interpretation, limitation A involves
recording information generated from a game playing session. Recording of
player generated content for a game playing session can be performed
through observation, evaluation, or judgment in the human mind or by a
human on paper. Acts that can be performed in the human mind or on paper
fall within the abstract idea exception grouping of mental processes
identified in the 2019 Guidance. See 2019 Guidance at 52. Thus, limitation
A recites a mental process, a judicial exception.
Limitation B of claim 14 recites “collecting game metrics for the
game playing session during the game playing session comprising different
accomplishments or milestones recorded in furtherance of a game goal.”
Under its broadest reasonable interpretation, limitation B involves producing
performance information (e.g., performance statistics) for a game playing
end user during the game playing session and storing the performance
information. See, e.g., Spec. ¶ 15. The recited collecting can be performed
through human observation, evaluation, or judgment in the human mind or
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on paper. Acts that can be performed in the human mind fall within the
abstract idea exception grouping of mental processes. See id. Thus,
limitation B also recites a mental process, which is a judicial exception.
Limitation C of claim 14 recites “comparing the game metrics to one
or more pre-stored threshold values.” Under its broadest reasonable
interpretation, limitation C involves comparing the collected game metrics
(e.g., performance statistics of the game playing end user) to corresponding
pre-stored metric thresholds. See, e.g., Spec. ¶ 16. Limitation C does not
recite how the game metrics are compared to the pre-stored threshold values.
The recited comparing can be performed through human observation,
evaluation, or judgment in the human mind or on paper. Acts that can be
performed in the human mind fall within the abstract idea exception
grouping of mental processes. See 2019 Guidance at 52. Thus, limitation C
also recites a mental process, which is a judicial exception.
Alternatively, we construe limitation C as involving comparing
values. Paragraph 18 of the Specification, for example, describes that values
of the game metrics for a game session can be compared to values of the pre-
stored metric threshold. The game metrics can be individual values or
summed values (i.e., numerical values). See, e.g., Spec. ¶ 18. Comparing
the value(s) of the game metrics to the value(s) of the pre-stored metric
threshold reveals one or more relationships between the compared values.
According to the 2019 Guidance, mathematical relationships, mathematical
formulas or equations, or mathematical calculations fall within the abstract
idea exception grouping of mathematical concepts. See 2019 Guidance at
52. Thus, limitation C also recites a mathematical concept, which is a
judicial exception.
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Limitation D of claim 14 recites “determining whether or not to
discard the player generated content based upon the comparison and storing
. . . only player generated content determined based upon the comparison not
to be discarded.” Under its broadest reasonable interpretation, limitation D
relates to responding to the comparison made in limitation C by making a
judgment (i.e., a decision) whether or not to discard the player generated
content based on the comparison, and retaining only player generated
content that is judged not to be discarded. See, e.g., Spec. ¶ 19. We find the
determining and storing recited in limitation D to be concepts that can be
performed through observation, evaluation, judgment, or opinion in the
human mind or on paper. Acts that can be performed in the human mind fall
within the abstract idea exception grouping of mental processes. See 2019
Guidance at 52. Thus, limitation D also recites a mental process, a judicial
exception.
Lastly, limitation E of claim 14 recites “naming the player generated
content . . . using at least a portion of the game metrics.” We understand
limitation E relates to assigning a name to the player generated content
stored in performing limitation D. This act can be performed through
observation, evaluation, or judgment in the human mind or on paper, and
thus, falls within the abstract idea exception subgrouping of mental
processes. See 2019 Guidance at 52. Accordingly, limitation E also recites
a mental process, which is a judicial exception.
Alternatively, we construe limitations A–E of claim 14 as relating to
the concept of following rules or instructions in managing player generated
content. Particularly, limitations A and B relate to following rules or
instructions in recording player generated content for a game playing session
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and collecting game metrics for the game playing session during the game
playing session. Limitation C relates to following rules or instructions in
comparing the collected game metrics to one or more pre-stored threshold
values. Limitation D relates to following rules or instructions in determining
whether or not to discard the player generated content based on the
comparison of limitation C, and in retaining only player generated content
that is judged not to be discarded. Lastly, limitation E relates to following
rules or instructions in assigning a name to the player generated content that
is stored in limitation D using at least a portion of the game metrics.
Following rules or instructions is a form of managing personal behavior or
relationships or interactions between people, which falls within the abstract
idea exception subgrouping of certain methods of organizing human activity.
See 2019 Guidance at 52. Thus, each of limitations A–E of claim 14 also
recites a method of organizing human activity, which is another judicial
exception.
We, therefore, determine that claim 14 recites the abstract ideas
(judicial exceptions) of mathematical concepts, certain methods of
organizing human activity, and mental processes, which are judicial
exceptions to patent-eligible subject matter. We proceed to Prong Two to
determine whether the claim is “directed to” the judicial exception.

Step 2A, Prong Two – Integration of Practical Application of Exception
We next determine whether claim 14 as a whole integrates the recited
judicial exceptions into a practical application of exceptions by:
(a) identifying whether there are any additional elements recited in the claim
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beyond the judicial exception; and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.
Appellant states that claim 14 requires the performance of the
following combination of process steps:
(1) “[p]layer generated content for a game playing session is recorded
into memory of a computer,”
(2) “[g]ame metrics are collected for the game playing session during
the game playing session that include different accomplishments or
milestones recorded in furtherance of a game goal,”
(3) “[t]he game metrics are compared to one or more pre-stored
threshold values,” and
(4) [i]t is then determined whether or not to discard the player
generated content based upon the comparison and only player
generated content is stored in fixed storage of the computer as
determined based upon the comparison not to be discarded, and
the player generated content is stored in the fixed storage using
at least a portion of the game metrics.

Appeal Br. 12–14 (quoting Spec. ¶¶ 17–20).
Process steps 1–4 closely correspond to limitations A–E discussed
above for Prong One. Appellant’s position is that the evidence of record
suggests that process steps 1–4 “describe a particular solution to a problem
or a particular way to achieve a desired outcome defined by the claimed
invention.” Appeal Br. 14. Appellant identifies this problem as the
managing of recorded player generated content. Id. at 14–15 (quoting Spec.
¶ 6). Appellant contends that, in contrast, previous methodologies could not
address this problem, as evidenced in the Specification. Id. at 15. Thus,
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Appellant contends, claim 14 is directed to a process driven improvement to
computer-related technology by providing a particular solution to a problem,
or a particular way to achieve a desired outcome defined by the claimed
invention. Id. (citing Enfish, LLC v. Microsoft Corp., 822 F. 3d 1327 (Fed.
Cir. 2016); McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d
1299 (Fed. Cir. 2016); Electric Power Group LLC v. Alstom S.A, 830 F.3d
1350 (Fed. Cir. 2016)).
According to the 2019 Guidance, an additional element or elements
that reflect(s) an improvement in the functioning of a computer, or an
improvement to other technology or technical field, is indicative that the
additional element(s) may have integrated the exception into a practical
application. See 2019 Guidance at 55. This improvement consideration is
also referred to as a technological solution to a technological problem.
Appellant’s Specification describes,
oftentimes, end user players prefer to record portions of
player generated content for future review. In this regard,
the player generated content can include performance
metrics observed during the course of a game playing
session, or the entirety of the game playing session as
viewed by the end user player, or any combination thereof.

Spec. ¶ 5 (emphasis added). This passage discloses that it is known to
record player generated content and that this content can include
performance metrics observed during the course of a game playing session.
Paragraph 6 of the Specification describes, “to the extent an end user plays
many game playing sessions over a period of time, the amount of content
recorded can become substantial. In consequence, managing the recorded
player generated content can become an administrative challenge.”
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(Emphasis added). Appellant appears to contend that process steps 1–4
describe a particular solution to this problem, or a particular way to achieve
a desired outcome defined by the claimed invention.
We are not persuaded. First, the claimed “determining whether or not
to discard the player generated content based upon the comparison” recited
in limitation D appears to depend on the particular pre-stored threshold
values that are used in the comparison. In other words, the particular pre-
stored threshold values appear to affect the amount of player generated
content that is discarded (and not stored).
Second, the language “determining whether or not to discard the
player generated content based upon the comparison” does not positively
require that any player generated content be discarded (and not be stored).
If, however, no player generated content must be discarded, it is not apparent
how performance of limitations A–E would reduce the amount of player
generated content stored. And, to the extent reducing the amount of player
generated content stored can be considered an improvement in the
management of the recorded player generated content, no such improvement
is required to result by performing limitations A–E. Accordingly, we are not
persuaded that process steps 1–4 identified by Appellant reflect an actual
improvement in the functioning of a computer, or an improvement to other
technology or technical field.
Third, even assuming that performing limitations A–E of claim 14
would reduce the amount of player generated content stored, this reduction
would seem to correspond to an improvement to the information stored in a
storage of a computer, and only insofar as reducing the amount of
information stored improves the stored information. Appellant’s contentions
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do not persuade us that performing limitations A–E changes how
information is stored in the computer. However, “an improvement to the
information stored by a database is not equivalent to an improvement in the
database’s functionality.” See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d
1281, 1288 (Fed. Cir. 2018). Here, reducing the amount of player generated
content stored in fixed storage appears to be a result that flows from
performing an abstract idea in conjunction with a generic database structure,
rather than an improvement to functionality of the database itself, or an
improvement in the functioning of the computer itself.
Applying the 2019 Guidance, in addition to the judicial exceptions
identified above in Prong One, claim 14 further recites that the computer
program product comprises “a computer readable storage medium having
computer readable program code embodied therewith.” The computer
readable storage medium is used with a computer having a “memory” and
“fixed storage” for reading the program code corresponding to limitations
A–E. The computer is not an element of the computer program product, but
is used for executing the computer readable program code. We note that
paragraphs 17, 18, and 28 of the Specification describe the gaming data
processing system at a high level. Appellant has not shown that the recited
additional elements in claim 14 are particular elements or machines and
more than generic elements. Absent persuasive evidence to the contrary, we
determine that claim 14 merely uses generic components as a tool to perform
the recited abstract ideas. See MPEP § 2106.05(f).
Considered as a whole, claim 14, under its broadest reasonable
interpretation, involves managing player generated content in a game
following rules or instructions and recites processes and concepts that can be
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performed in the human mind or by hand. These steps are similar to other
processes that courts have determined are mental processes. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) (determining that a claim whose “steps can all be performed in the
human mind” is directed to an unpatentable mental process). The recitation
of computer components does not, by itself, establish that the claim does not
recite mental steps. See, e.g., Versata Dev. Grp. Inc. v. SAP Am., Inc., 793
F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that
required the use of a computer and still found that the underlying, patent-
ineligible invention could be performed via pen and paper or in a person’s
mind.”); CyberSource, 654 F.3d at 1375, 1372 (holding that the incidental
use of a “computer” or “computer readable medium” does not make a claim
otherwise directed to process that “can be performed in the human mind, or
by a human using a pen and paper” patent eligible.) Also, “performance of a
claim limitation using generic computer components does not necessarily
preclude the claim limitation from being in the mathematical concepts
grouping, Benson, 409 U.S. at 67, or the certain methods of organizing
human activity grouping, Alice, 573 U.S. at 219–20.” See 2019 Guidance at
52 n. 14 (emphasis omitted). “If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.” Id.
Appellant also contends that the claimed “particular process”
“definitively does not foreclose all possible methodologies for achieving the
abstract concept of managing player generated content” (Appeal Br. 19) and
the claims “are restricted as to how the innovative concept of ‘managing
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player generated content’ is achieved without foreclosing other ways of
solving the problem at hand while reciting a specific series of steps that
result in a departure from the routine and conventional sequence of events”
(id. at 21). Even if these contentions are correct, however, “preemption may
signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Accordingly,
this argument is unpersuasive.
For these reasons, we determine that claim 14 does not recite an
additional element, or a combination of additional elements, apart from the
limitations reciting an abstract idea that applies, relies on, or uses the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the exception. Thus, the judicial exception is not integrated into
a practical application, and the claim is “directed to” the judicial exceptions.
See 2019 Guidance at 54. Accordingly, we proceed to determine whether
claim 14 recites an “inventive concept.”

Step 2B – Inventive Concept
For Step 2B of the analysis, we determine whether the claim adds a
specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field. See 2019 Guidance.
The Examiner concludes that claim 14 does not include any additional
elements that are sufficient to amount to significantly more than the abstract
idea itself. Final Act. 4–5.
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Appellant contends that the Examiner has not conducted a proper
analysis under Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018).
Reply Br. 5–6. Appellant disputes that the claim language merely reflects a
technology that is well-understood, routine, and conventional. Id. at 6.
Appellant contends that claim 14 recites certain claim elements (which, we
note, correspond closely to limitations A–E discussed above for Step 2A (id.
at 8–9)), but the Examiner has not compared these claim elements to any
cited court decision (id. at 9).
Appellant’s contentions are not persuasive. Limitations A–E of claim
14 recite abstract ideas. Consequently, Appellant is relying on the
application of the abstract ideas themselves as the alleged inventive concept.
Appellant does not show persuasively that the claimed abstract ideas are
applied using techniques that are not conventional and well-understood.
However, a claim’s “use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.” Buyseasons, 899 F.3d at 1290;
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (“[A] claim for a new abstract idea is still an abstract idea.”).
We agree with the Examiner that the claimed subject matter merely
uses generic computer components as a tool to perform the abstract ideas.
See, e.g., Spec. ¶¶ 17, 18, 28, 29. This does not transform the claim into a
patent-eligible application of the abstract idea. Alice, 573 U.S. at 212.
For these reasons, we sustain the rejection of claim 14 under 35
U.S.C. § 101. Claims 8, 10–13, and 16–20 fall with claim 14.

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Obviousness of Claims 8, 10, 12–14, 16, 18, and 19 over Thompson and Lim
Appellant contends that the combination of Thompson and Lim fails
to teach the limitation of “naming of the player generated content in the
fixed storage using at least a portion of the game metrics,” where the game
metrics “include different accomplishments or milestones recorded in
furtherance of the game goal,” as required by claims 8 and 14. Appeal Br.
4–5. Appellant contends that paragraphs 48 and 50 of Thompson relied on
by the Examiner do not teach the “naming” limitation. Id. at 5. Appellant
contends that paragraph 48 refers to an access token 402, which “provides
‘permission’ to a player (or game console user) to upload data to, for
example, the storage server.” Id. at 6. Appellant contends that the access
token cannot be “player generated content. Id. Appellant contends that
paragraph 50 of Thompson refers to a “leaderboard” that identifies rankings
for different players and corresponding performance data, but does not
suggest that the leaderboard is named in fixed storage using at least a portion
of a game metric. Id.
The Examiner responds that Thompson discloses that a server creates
a leaderboard on which the player’s name, ranking, and additional “game
metrics” are displayed. Ans. 11 (citing Thompson, Figs. 4, 5). The
Examiner concedes that “Thompson does not explicitly disclose game
metrics for milestones recorded in furtherance of a game goal.” Id. The
Examiner finds that Lim teaches a gaming application that creates a
leaderboard associated with the gameplay, and that “[v]arious game metrics
that can be tracked by a leaderboard include scores (e.g. high score for a
game or a level within a game), time (e.g., fastest overall time, fastest lap
time), rank, milestone or objective reached (e.g., completion of a quest,
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treasure collected, enemy vanquished).” Id. at 11–12. Appellant replies that
the Examiner does not refer to any teaching in Lim of naming a file using
this information. Reply Br. 4. Therefore, Appellant contends, the
combination of Thompson and Lim does not suggest naming player
generated content in fixed storage using at least a portion of the game
metrics, as claimed. Id.
To the extent Appellant may be contending that claim 8 or 14 requires
naming a “file” associated with the player generated content “using at least a
portion of the game metrics,” claims 8 and 14 do not expressly recite such
limitation. Nonetheless, we are persuaded that the Examiner has not
explained adequately based on evidence how the combination of Thompson
and Lim discloses or suggests naming player generated content in a fixed
storage using at least a portion of the game metrics, as required by claims 8
and 14. Accordingly, we do not sustain the rejection of claims 8, 10, 12–14,
16, 18, and 19 as unpatentable over Thompson and Lim.

Obviousness of Claims 11 and 17 over Thompson, Lim, and Yabuki
Obviousness of Claim 20 over Thompson, Lim, and McCaffrey
The Examiner’s reliance on Yabuki in rejecting claims 11 and 17
(Final Act. 8–9) and McCaffrey in rejecting claim 20 (id. at 9–11) fails to
cure the deficiency in the rejection of parent claims 8 or 14 over Thompson
and Lim. Accordingly, we do not sustain the rejections of claims 11 and 17
as unpatentable over Thompson, Lim, and Yabuki, or claim 20 as
unpatentable over Thompson, Lim, and McCaffrey.

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CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
8, 10–14, 16–20 § 101 8, 10–14, 16–
20

8, 10, 12–14, 16,
18, 19
§ 103 Thompson,
Lim
8, 10, 12–14,
16, 18, 19
11, 17 § 103 Thompson,
Lim, Yabuki
11, 17
20 § 103 Thompson,
Lim, McCaffrey
20
Overall Outcome 8, 10–14, 16–
20
8, 10–14, 16–
20

No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED