Appeal No. 97-4293
Application No. 08/138,396
apparatus since the patient could initiate the switch means of
the modified device” (Answer, page 5). In our opinion,
however, this ignores the limitation underlined in the portion
of the claim quoted above which, in view of the description of
the invention in the specification we interpret to mean that
the switch be adapted to be so positioned as to be operated by
“said body part,” which means the body part of the patient
that is the subject of the force profile, and not just any
body part of any person. There is no such teaching in Fraser.
From our perspective, the most that Fraser might have
suggested to one of ordinary skill in the art is to provide
the Bourland apparatus with a switch so located as to be
activated by the operator, as is pictured in Fraser’s Figure
1.
It is our conclusion that the teachings of Bourland and
Fraser fail to establish a prima facie case of obviousness
with regard to the subject matter of independent claims 1 and
18. We therefore will not sustain the rejection of those
claims or, it follows, of claims 2-5, 9-11, 14-16 and 22-26,
which are dependent therefrom.
The Double Patenting Rejection
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