Appeal No. 2004-1125
Application No. 09/923,998
must inherently or necessarily possess the same characteristics
recited in appealed claim 1. In re Schreiber, 128 F.3d 1473,
1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997); In re Spada, 911
F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
We are not persuaded by the appellant’s erroneous argument
that, unlike the recited coating, Erwin’s coating increases oil
wettability. Erwin actually teaches that the fluorocarbon is
“preferentially oil wettable” relative to the aqueous solution.
(Column 1, line 68 to column 2, line 5.) This is not
inconsistent with the characteristic or function of the coating
recited in appealed claim 1, which characteristic or function
does not involve the presence of an aqueous environment but an
air conditioning refrigerant instead.
We also reject the appellant’s untenable argument (reply
brief filed Mar. 31, 2004, paper 17, pages 1-2) that only
appealed dependent claim 7, and not independent claim 1,
specifies fluorocarbon as one of the recited low surface energy
coating substances. This argument appears to be based on a
complete misunderstanding of the relationship between an
independent claim and a dependent claim. Because a dependent
claim must further limit an independent claim,2 an independent
2 See 37 CFR § 1.75(c)(2003)(effective Oct. 1, 1982).
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