Appeal No. 97-4293
Application No. 08/138,396
The appellants’ arguments have not convinced us that the
invention set forth in application claim 27 is patentably
distinct over the one described in the claims of the patent.
At best, it is an obvious variation of the invention defined
in the patent claims. As stated in In re Schneller, 397 F.2d
350, 355, 158 USPQ 210, 215 (CCPA 1968), “[t]he controlling
fact is that patent protection for the [invention] . . .
covered by the claims of the patent, would be extended by
allowance of the appealed claims”. We conclude that to be the
case here. The double patenting rejection of claim 27 is
sustained, along with the rejection of claims 28 and 29, for
which separate arguments were not provided.
The same rationale dictates the same result with regard
to claims 41 and 42. The appellants note here that claim 41
recites a single switch disposed on a portion of the
prosthesis, whereas claim 1 of the patent requires a plurality
of switch means, and thus is more limiting in scope. This
being the case, they argue, claim 1 “would not encompass a
device having a single switch” (Brief, pages 14 and 15). This
argument fails, however, for claim 41 does not recite a single
switch, but “a switch” (emphasis added), and since it presents
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