Appeal No. 2003-1663
Application 09/975,934
line 46 in the row and column directions, respectively
(specification, p. 8, line 19 to p. 9, line 4).
The examiner finds that the "AND functional circuit" of the
present application and the "AND logical circuit" of the '973
patent are directed to the same AND gate circuit and, therefore,
are claiming the same invention (EA3).
Appellants argue that the proper test is whether the
application claims claim the same invention as the patent claims,
not whether they read on the same element (Br6-7; Br11-12).
We agree with appellants that the test for same-invention
double patenting is whether the application claims claim the same
invention as the '973 patent claims. The fact that the claims
read on the same element does prove that the scope is identical.
Therefore, we must examine the scope of the claims.
Appellants argue that the term "AND functional circuit" in
the application claims is broader than the term "AND logical
circuit" recited in the patent claims, such that there are
embodiments of the invention which fall within the scope of the
application claims but do not fall within the scope of the patent
claims (Br6-7). Appellants refer to the statement in Taub and
Schilling, Digital Integrated Electronics (McGraw-Hill 1977),
p. 440, "[i]n logical gates all inputs and outputs are digital
signals," and argue that one of ordinary skill in the art might
arguably interpret "AND logical circuit" to mean a logical
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