Appeal No. 95-2741
Application 08/008,120
210 USPQ 795, 802 (CCPA 1981). Thus, the language of claim 1 does not exclude the use of a liquid
quench prior to the effluent entering the lined wall heat exchanger.
Additionally, a comparison of claim 1 with dependent claim 2 makes it clear that adding a quench
fluid to the effluent prior to entering the lined wall heat exchanger is not excluded from claim 1. Claim 2
expressly requires the step of “injecting a quench into the effluent prior to passing into the lined wall heat
exchanger . . . .” Claims in dependent form are construed to include all the limitations of the claim
incorporated by reference into the dependent claim and must further limit the claim to which it refers. 35
U.S.C. § 112, ¶ 4. Thus, limitations added by a dependant claim are implicitly within the scope of the claim
to which it refers. As noted by the Federal Circuit: "It is axiomatic that dependent claims cannot be found
infringed unless the claims from which they depend have been found to have been infringed." Wilson
Sporting Goods Co. v. David Geoffrey & Associates, 904 F.2d 677, 685, 14 USPQ2d 1942, 1949 (Fed.
Cir. 1990) quoting Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1553 & n.9, 10
USPQ2d 1201,1208 & n.9 (Fed. Cir. 1989). Thus, the use of a quench liquid prior to the effluent entering
the lined wall heat exchanger is implicitly included within the scope of Claim 1.
3. Rejection over Austin
In rejecting the claims the examiner originally was of the view that lined wall heat exchangers were
well known in the art. (First office action, paper no. 2, paragraph bridging pages 2-3). Applicant traversed
the examiner’s position, expressly stating that in applicant’s experience, line wall heat exchangers were not
well known in the art. (Amendment A, paper no. 4, paragraph 3.) In his Answer, the examiner refers to23
column 5, line 26, of Austin apparently as support for the position that the use of a line walled heat
23 Under appropriate circumstances, the examiner’s burden of presenting a prima facie case of
unpatentability may be satisfied by an statement that certain features of the claims are “well known.” See, MPEP §
1244.03. Where an applicant goes on the record expressly contradicting the examiner’s statement, as was done here,
the examiner must supplement the record with evidence supporting the rejection. See 37 CFR § 1.104(d)(2). Because
the duty of candor and good faith placed upon applicant’s by 37 CFR § 1.56(a), applicant’s contradiction of the
examiner’s holding need not be in the form of an affidavit or declaration.
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