Appeal No. 2006-1275 Παγε 3
Application No. 10/691,954
We turn first to the examiner's rejection of claims 1, 10, 12 to 14, 16 and 17
under 35 U.S.C. § 102(b). We initially note that to support a rejection of a claim under
35 U.S.C. § 102(b), it must be shown that each element of the claim is found, either
expressly described or under principles of inherency, in a single prior art reference. See
Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir.
1983), cert. denied, 465 U.S. 1026 (1984).
The examiner's findings in regard to this rejection can be found on pages 3 to 5
of the answer.
The appellants argue that Schenkel does not describe a coating bonded on the
skirt in which the coating has a "plurality of recesses formed thereon."
The examiner states:
. . . Schenkel discloses a coating (28) having a plurality of recesses (26)
formed thereon so as to define a predetermined pattern of recesses (saw
tooth pattern, col. 2 and ll.43) on the surface of the skirt (14). The
recesses are formed on both the skirt and the coating because the
coating takes the shape of the recesses (ridges and valleys) as they are
applied on the surface of the skirt, as shown on figures 2 and 3)[ answer
at page 6].
We find that Schenkel discloses that the piston skirt includes a plurality of pointed
ridges 24 separated by valleys 26 for engaging the cylinder (col. 1, lines 42 to 45) and
that these pointed ridges 24 and valleys 26 define a saw tooth-like finish (col. 2, lines 42
to 43). In order to further reduce friction between the skirt and the cylinder, the skirt is
coated with a fluorocarbon polymer and this fluorocarbon coating follows the contour of
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