Ex Parte Boothby

Board of Patent Appeals and Interferences

Jan 21, 2004

09240563 (B.P.A.I. Jan. 21, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID J. BOOTHBY
____________
Appeal No. 2002-1905
Application No. 09/240,563
____________
ON BRIEF
____________
Before HAIRSTON, DIXON, and LEVY, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 22
through 27.
The disclosed invention relates to a data processing method
for synchronizing the data records of a plurality of disparate
databases.
Claim 22 is illustrative of the claimed invention, and it
reads as follows:
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Application No. 09/240,563
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22. A data processing method for synchronizing the data
records of a plurality of disparate databases, the method
comprising the steps of:
providing a status file containing data records reflecting the
contents of data records existing in at least one of the disparate
databases at the time of a prior synchronization;
comparing data records from at least one of a first and a
second of the plurality of databases to corresponding data records
of the status file to determine whether data records of the
database have changed or been deleted since the prior
synchronization or whether there are new data records since the
earlier synchronization;
updating the first and second databases based on the outcome
of the comparing step; and
updating the status file so that its data records reflect the
contents of the data records after they have been updated,
wherein the data records of the first and the second databases
are without unique identification codes.
The reference relied on by the examiner is:
Boothby 5,684,990 Nov. 4, 1997
Claims 22 through 27 stand rejected under the judicially
created doctrine of obviousness-type double patenting over claims
1, 6, 7, 9, 17 through 19, 21 and 22 of Boothby.
Reference is made to the final rejection (paper number 22),
the brief (paper number 26) and the answer (paper number 27) for
the respective positions of the appellant and the examiner.
Appeal No. 2002-1905
Application No. 09/240,563
3
OPINION
We have carefully considered the entire record before us, and
we will sustain the obviousness-type double patenting rejection of
claims 22 through 27.
Appellant argues (brief, pages 2 and 3) that it is unnecessary
and inappropriate to require a terminal disclaimer because any
patent issuing from this application will expire before Boothby as
a result of new laws defining the terms of patents, and because
In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982) is not
binding precedent on the Federal Circuit.
In the first appeal to be heard and published by the newly
created Court of Appeals for the Federal Circuit, the court sitting
in banc considered what case law, if any, may appropriately serve
as established precedent, and decided that “the holdings of our
predecessor courts, the United States Court of Claims and the
United States Court of Customs and Patent Appeals, announced by
those courts before the close of business September 30, 1982, shall
be binding as precedent in this court.” South Corp. v. U.S., 690
F.2d 1368, 215 USPQ 657 (Fed. Cir. 1982). Notwithstanding the
earlier termination date of any patent that may issue from this
application, appellant’s arguments fail to convince us that the
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Application No. 09/240,563
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changes in the law supersede the terminal disclaimer requirements
of Van Ornum.
In summary, the obviousness-type double patenting rejection of
claims 22 through 27 is sustained.
DECISION
The decision of the examiner rejecting claims 22 through 27
under the judicially created doctrine of obviousness-type double
patenting is affirmed.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
KWH/lp
Appeal No. 2002-1905
Application No. 09/240,563
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G. ROGER LEE
FISH & RICHARDSON
225 FRANKLIN STREET
BOSTON, MA 02110-2804