Ex Parte James

Board of Patent Appeals and Interferences

Jan 17, 2003

09029581 (B.P.A.I. Jan. 17, 2003)

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written for publication and is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DEREK ROBERT JAMES
_____________
Appeal No. 2001-2303
Application No. 09/029,581
______________
HEARD: JANUARY 7, 2003
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Before HAIRSTON, DIXON, and SAADAT, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 through 8.
The disclosed invention relates to a method and apparatus
for checking the consistency of an item of data in a cache
database with a respective item of data in a master database by
comparing a first key (e.g., a time-stamp) stored in association
with the item of data in the cache database with a second key
stored in association with an index entry for the respective item
Appeal No. 2001-2303
Application No. 09/029,581
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of data in the master database.
Claim 1 is illustrative of the claimed invention, and it
reads as follows:
1. A method for checking the consistency of an item of
data in a cache database with a respective item of data in a
master database by comparing a first key stored in
association with the item of data in the cache database with
a second key stored in association with an index entry for
the respective item of data in the master database.
The reference relied on by the examiner is:
Brunner et al. (Brunner) 5,550,971 Aug. 27, 1996
Claims 1 through 8 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Brunner.
Reference is made to the briefs (paper numbers 14 and 17)
and the answer (paper number 16) for the respective positions of
the appellant and the examiner.
OPINION
We have carefully considered the entire record before us,
and we will reverse the anticipation rejection of claims
1 through 8.
According to the examiner (answer, pages 3 and 4), the
claimed comparing step “is shown by the reference in the summary
of the invention as essentially the same function as follows see
col. 2 line 34 et seq.,” and “is an essential feature of the
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Application No. 09/029,581
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cited reference.”
We agree with the examiner (answer, page 4) that Brunner
discloses a local cache database element 26 and a remote database
element 12. Although a comparison between the data content in a
cache and the data content in a master database is ordinarily
performed to ensure consistency between the data in the two
databases, Brunner does not, however, disclose a comparison of
any type between the cache 26 and the database 12. Certainly,
Brunner’s silence concerning the type of comparison performed for
data consistency does not mean that Brunner would have to use the
comparison performed by appellant. To suggest otherwise is to
fall victim to impermissible hindsight. The examiner’s argument
(answer, page 5) that “the applicant’s invention is anticipated
by the teaching of the prior art as represented in the
applicant’s brief” is without merit since appellant never
admitted that the claimed comparison with an “index entry” was a
part of the prior art. With respect to the examiner’s inherency
argument (answer, page 6), we agree with the appellant’s argument
(brief, page 10) that “any allegation that the specific
comparison . . . would necessarily flow from the teachings of
Brunner et al. is unfounded, particularly since Brunner et al.
fails to provide any detail on checking data consistency.”
Appeal No. 2001-2303
Application No. 09/029,581
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In summary, the anticipation rejection is reversed because
Brunner does not disclose “every limitation of the claimed
invention, either explicitly or inherently.” Glaxo Inc. v.
Novopharm Ltd., 52 F.3d 1043, 1047, 34 USPQ2d 1565, 1567 (Fed.
Cir.), cert. denied, 516 U.S. 3378 (1995).
DECISION
The decision of the examiner rejecting claims 1 through
8 under 35 U.S.C. § 102(e) is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
KWH:hh
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