Appeal No. 95-0065
Application 07/568,348
Appellant, on page 44 of the brief, cites the test
for "same invention" double patenting set forth in In re
Vogel, 422 F.2d 438, 441, 164 USPQ 619, 622 (CCPA 1970), i.e.:
A good test, and probably the only
objective test, for "same invention," is
whether one of the claims could be
literally infringed without literally
infringing the other. If it could be,
the claims do not define identically the
same invention.
See also In re Hallman, 655 F.2d 212, 216, 210 USPQ 609, 611-
12 (CCPA 1981). Appellant contends that there is no "same
invention" double patenting here, because claim 15 would not
be infringed if the invention claimed in claim 54 were used to
remove bodily tissue other than artherosclerotic plaque.
We do not agree. The claimed subject matter here is
a system, not a method of use. The recitation of a new use
for an old product does not make a claim to that product
patentable. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997); La Bounty Mfg. Inc. v. ITC, 958
F.2d 1066, 1075, 22 USPQ2d 1025, 1032 (Fed. Cir. 1992).
Claims 54 and 15 are drawn to the same invention because one
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