Appeal No. 2002-1234
Application No. 09/546,466
Although we agree with the examiner that the heat transfer means 1 in Sendoda performs the
claimed function of transferring heat from the coil to yield the same result of heat transfer, we do
not, however, agree with the examiner that Sendoda performs the noted function “in substantially
the same way.” As argued by appellants, the claimed “means for transferring heat,” when
considered under the sixth paragraph of 35 U.S.C. § 112, includes a heat transfer plate embedded in
the coils with legs members extending out of the coils as opposed to the metal plate 1 in Sendoda
that relies on outside contact with the coils for heat transfer. If the claimed invention is removing
heat from the interior of the coil, and Sendoda is removing heat from the surface of the coil, then
the two heat transfer means do not perform the heat transfer task “in substantially the same way.”
Thus, the 35 U.S.C. § 102(b) rejection is reversed because the teachings of Sendoda do not
anticipate the incorporated limitations2 of claim 15.
DECISION
The double patenting rejection of claim 15 is affirmed, and the anticipation rejection of
claim 15 is reversed.
2 At oral hearing, appellants’ counsel suggested that maybe the specification should be
amended to fully delineate the exact structure that is needed to perform the function of broadly
recited claim 15. From the standpoint of notice to the public as to what is covered by such a
broad claim, this panel certainly agrees with the suggestion. We note to the examiner that any
amendment to identify the structure corresponding to the means-plus-function limitation would
not constitute new matter.
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