Appeal No. 95-2741
Application 08/008,120
Metals Corporation of America v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 779 (Fed. Cir. 1985);
Raytheon Co. v. Roper Corp., 724 F.2d 951, 956, 220 USPQ 592, 596 (Fed. Cir. 1983). Applicant
asserts that the subject matter of Claim 1 is distinguishable from Austin because Austin teaches the use of
a preliminary quench liquid to cool the effluent prior to introduction into the heat exchangers. Applicant 20
appears to assert that Claim 1 does not permit the use of a preliminary quench fluid prior to the introduction
of the effluent into the heat exchanger. Thus, applicant argues:
Applicant has discovered a process for producing carbon blacks where
pyrolysis is stopped not by a quench, but by means of a lined wall heat
exchanger. As a result, there is no need to introduce any quench into the
effluent and, in a preferred embodiment of the present invention, no
quenching fluid is injected into the effluent. However, if for economic
reasons it is desired to cool the effluent prior to the point at which the
effluent enters the lined wall heat exchanger, a reduced amount of
quenching fluid, relative to the amount of quenching fluid utilized in a
conventional process to stop pyrolysis, may be injected into the effluent.
Claim 2 is directed to this embodiment of the present invention. [21]
The examiner construes claim 1 to be open to inclusion of other unspecified process steps including
the use of a quench fluid prior to the entry of the effluent into the lined wall heat exchanger. 22
Claim 1 does not expressly recite the use of a quench liquid prior to the introduction of the effluent
into the lined wall heat exchanger. The preamble of claim 1, however, uses the open word “comprising.”
The use of the word opens the claim to the inclusion of additional unspecified steps. Moleculon Research
Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); In re Baxter, 656 F.2d 679, 686,
20 Appeal Brief, page 7, second paragraph.
21 Appeal Brief, paragraph bridging pages 7-8.
22 Examiner’s Answer, pages 4-5.
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