Appeal No. 97-4293
Application No. 08/138,396
The examiner has rejected claims 27-29, 41 and 42 under
the judicially created doctrine of double patenting, on the
theory that the allowance of these claims would extend the
rights to exclude already granted to the appellants in U.S.
Patent No. 5,253,656. By way of background, on May 23, 1991,
the appellants filed the application that matured into the
cited patent and also forms the basis for the present
application, which is a division thereof. This occurred at
the appellants’ bidding, when they chose to cancel the claims
in the earlier application that were under rejection so that a
patent could be issued on those claims which the examiner had
indicated contained patentable subject matter.
The proper test in the present situation is whether the
claims of the application are merely an obvious variation of
the claims of the patent. See In re Goodman, 11 F.3d 1046,
1052, 29 USPQ2d 2010, 2015 (Fed. Cir. 1993). The appellants
point out that claim 27 calls for “disposing at least one
switch on said prosthesis” for producing a switch active
signal “whereby said step of executing a read event occurs in
response to said switch active signal,” as opposed to patent
claim 13, which does not recite a switch on the prosthesis and
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