Appeal No. 2002-1234
Application No. 09/546,466
for transferring the heat in Sendoda “is an equivalent of the claimed means for transferring heat as
the means for transferring heat of Sentoda [sic, Sendoda] includes the minimal amount of structure
necessary for performing the identical claimed function (i.e., heat transfer), in substantially the same
way (i.e., E-block/electrical coil coupling), with substantially the same result (i.e., ‘transferring heat
from the electrical coil to the E-block’) . . . .”
We agree with the examiner’s double patenting reasoning, but disagree with the examiner’s
equivalence rationale in the prior art rejection.
As a result of appellants’ direction to import the detailed structure and the placement of the
heat transfer plate 170 and its leg members 186 between the inner and outer coil portions into the
claim on appeal to describe how the corresponding structure carries out the recited function in the
claim, we find that such structure and placement of the heat transfer means would have been
obvious based upon the claims found in the patent to Adams. Thus, the double patenting rejection
is sustained. MPEP § 804.02VI buttresses the examiner’s reason (i.e., the harassment of potential
infringers) for maintaining the double patenting rejection, and explains why a terminal disclaimer is
needed to overcome this rejection. This section of the MPEP explains that the terminal disclaimer
is needed to ensure that “any patent granted on that application be enforceable only for and during
the period that the patent is commonly owned with the . . . patent which formed the basis for the
rejection . . . to avoid the potential for harassment of an accused infringer by multiple parties with
patents covering the same patentable invention . . . ,” and because appellants may make a request
“for patent term extension based upon prosecution delays during the application process.”
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