Ex Parte Jupin

Patent Trial and Appeal Board

Oct 31, 2014

12819011 (P.T.A.B. Oct. 31, 2014)

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.
12/819,011 06/18/2010 Brian D. Jupin PD-206030A 9060
20991 7590 11/03/2014
THE DIRECTV GROUP, INC.
PATENT DOCKET ADMINISTRATION
CA / LA1 / A109
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
EXAMINER
MURPHY, CHARLES C
ART UNIT PAPER NUMBER
2455
MAIL DATE DELIVERY MODE
11/03/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN D. JUPIN
____________

Appeal 2012-0087091
Application 12/819,0112
Technology Center 2400
____________

Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
JAMES A. WORTH, Administrative Patent Judges.

WORTH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–30. We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
We AFFIRM.

1 Our decision refers to the Appellant’s Appeal Brief (“App. Br.,” filed
Oct. 10, 2011) and Reply Brief (“Reply Br.,” filed May 14, 2012), and the
Examiner’s Answer (“Ans.,” mailed Apr. 19, 2012).
2 According to Appellant, the real party in interest is DIRECTV Group, Inc.
of El Segundo, California (App. Br. 2).
Appeal 2012-008709
Application 12/819,011

2
Introduction
Appellant’s disclosure relates to a method, system, and portable
device for storing information in a portable media player or other portable
device from a storage device and for marketing based thereon (Spec. ¶ 2).
Claims 1, 18, 28, and 30 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the subject matter on appeal:
1. A method comprising:
coupling a portable device to a first storage device
separate from the portable device at a first time;
storing a file on the portable device from the first storage
device;
coupling the portable device to a second storage device at
a second time after the first time;
storing a token on the portable device from the second
storage device;
coupling the portable device to the first storage device at
a third time after the second time;
thereafter, communicating the token to a central location
from the first storage device; and
directing advertising to a first user of the first storage
device in response to the token.

App. Br. 15, Claims App.

Prior Art Relied Upon
Karaoguz U.S. 2004/0117834 A1 June 17, 2004
Medvinsky U.S. 2005/0022019 A1 Jan. 27, 2005
Tollinger US 2006/0190331 A1 Aug. 24, 2006
Sanjay US 2008/0004021 A1 Jan. 3, 2008

Rejections on Appeal
1) Claims 1–8 and 10–30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Karaoguz, Sanjay, and Tollinger; and
Appeal 2012-008709
Application 12/819,011

3
2) Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Karaoguz, Sanjay, Tollinger, and Medvinsky.

OPINION
Independent claim 1 and dependent claims 2–8 and 10–17
The primary issue presented by this appeal is whether the prior art
relied on by the Examiner describes both a “first storage device” and a
“second storage device,” as recited by the steps of claim 1 (See App. Br. 6–
7). As explained herein, we conclude that both limitations are met.
We are unpersuaded by Appellant’s argument (App. Br. 6–7) that
Tollinger fails to disclose “storing a file on the portable device from the first
storage device,” because the Examiner (Ans. 5–6, 23) correctly relies on
Karaoguz (¶ 34), rather than on Tollinger, for this claim step. Karaoguz
describes an interface between a media peripheral device and a personal
computer in which data is exchanged (id).
Similarly, we are also unpersuaded by Appellant’s argument (App.
Br. 6–7) that the prior art relied on by the Examiner fails to disclose
“coupling the portable device to a second storage device at a second time
after the first time,” because the Examiner (Ans. 6, 23) correctly relies on
Sanjay for the sequential coupling of devices. Sanjay (¶¶ 12–14) describes
that a portable device may couple to multiple base stations.
We are unpersuaded by Appellant’s argument (App. Br. 7) that
Tollinger fails to disclose “thereafter, communicating the token to a central
location from the first storage device” because the Examiner (Ans. 24)
correctly finds that Tollinger (¶¶ 13, 45–47, 52–53) discloses that the
controller (the first storage device) sends a client ID (a token) to the host
Appeal 2012-008709
Application 12/819,011

4
computer. We are also unpersuaded by Appellant’s argument (Reply Br. 4)
that the controller is a subsystem of the host computer and, therefore, is a
software-based component rather than a “storage device,” as recited by
claim 1 (Reply Br. at 4). A subsystem of a hardware device that stores
information is still within the meaning of a “storage device.” We, therefore,
agree with the Examiner that Tollinger, in combination with Karaoguz and
Sanjay, as set forth above, discloses a “first storage device,” as recited by
claim 1. In this connection, we agree with the Examiner’s conclusion
(Ans. 8) that it would have been obvious to modify the system of Karaoguz
and Sanjay to include the advertising system of Tollinger to improve
methods of advertising delivery to a client at a portable device.
Additionally, we unpersuaded by Appellant’s argument that Tollinger
does not disclose “storing a token on the portable device from the second
storage device.” Appellant (App. Br. 7) does not dispute that Tollinger’s
user management system (“UMS”) sends an identifier to the portable device.
We determine that the UMS is a “storage device” for similar reasons that the
controller is a “storage device,” as discussed above. Therefore, we conclude
that Tollinger’s UMS is a “second storage device.”
Further, we are unpersuaded by Appellant’s argument (Reply Br. 3)
that the identifier (token) that Tollinger’s UMS (second storage device)
sends to the portable device is not the same as the identifier (token) that
Tollinger’s controller (first storage device) sends to the host computer. We
note that the identifier that the Examiner relies on, the UID, of
paragraphs 47–48 and 52 of Tollinger, is a “unique client ID.” Thus, we
agree with the Examiner that the identifier (token) is the same for both the
“first storage device” and the “second storage device.”
Appeal 2012-008709
Application 12/819,011

5
We are unpersuaded by Appellant’s argument that Tollinger does not
disclose “directing advertising to a first user of the first storage device in
response to the token” because the user of Tollinger’s portable device is also
a user of Tollinger’s first storage device for the reasons stated by the
Examiner (See Ans. 25).
Therefore, we sustain the rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over Karaoguz, Sanjay, and Tollinger.
Appellant does not argue for the patentability of claims 2–8 and
10–17 separately from arguments as to claim 1. Therefore, we sustain the
rejection of claims 2–8 and 10–17 under 35 U.S.C. § 103(a) as unpatentable
over Karaoguz, Sanjay, and Tollinger, for the same reasons.

Independent claim 18 and dependent claims 19–27
Appellant’s arguments as to claim 18 are similar to the above
arguments as to claim 1 addressed above, i.e., that there is at most one set
top box because, according to Appellant, only Tollinger’s UMS provides the
identifier (App. Br. 10). We find these arguments unpersuasive for similar
reasons as for claim 1.
In addition, we are unpersuaded by Appellant’s argument that
Tollinger’s UMS is not a “set top box,” as recited by claim 18, even if it is a
storage device (App. Br. 9–10). Appellant has not suggested a different
meaning for “set top box” from “storage device” other than to argue that the
two terms are not interchangeable. A reference does not have to use the
claim term “in haec verba” in order to contain a disclosure thereof. In re
Bode, 550 F.2d 656, 660 (CCPA 1977). We, therefore, sustain the rejection
Appeal 2012-008709
Application 12/819,011

6
of claim 18 under 35 U.S.C. § 103(a) as unpatentable over Karaoguz,
Sanjay, and Tollinger.
Appellant does not argue for the patentability of claims 19–27
separately from arguments as to claim 18. Therefore, we sustain the
rejection of claims 19–27 under 35 U.S.C. § 103(a) as unpatentable over
Karaoguz, Sanjay, and Tollinger, for the same reasons.

Independent claim 28 and dependent claims 29 and 30
Appellant’s arguments as to claim 28 are similar to the above
arguments as to claim 18. Therefore, we sustain the rejection of claim 28
under 35 U.S.C. § 103(a) as unpatentable over Karaoguz, Sanjay, and
Tollinger, for similar reasons.
Appellant does not argue for the patentability of claims 29 and 30
separately from arguments as to claim 28. Therefore, we sustain the
rejection of claims 19–27 under 35 U.S.C. § 103(a) as unpatentable over
Karaoguz, Sanjay, and Tollinger, for the same reasons.

Dependent claim 9
Appellant does not argue for the patentability of claim 9 separately
from arguments as to claim 1. Therefore, we sustain the rejection of claim 9
under 35 U.S.C. § 103(a) as unpatentable over Karaoguz, Sanjay, Tollinger,
and Medvinsky, for the same reasons.

DECISION
The decision of the Examiner to reject claims 1–30 is affirmed.
Appeal 2012-008709
Application 12/819,011

7
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

pgc