Ex Parte ONODA et al - Page 2




              Appeal No. 2003-0208                                                                 Page 2                
              Application No. 08/578,996                                                                                 


                                                    BACKGROUND                                                           
                     The appellants' invention relates to a surface treatment for a piston ring for use                  
              in internal combustion engines (specification, p. 1).  A copy of the claims under appeal                   
              is set forth in the appendix to the appellants' brief.                                                     


                     The prior art references of record relied upon by the examiner in rejecting the                     
              appealed claims are:                                                                                       
              Ishida et al. (Ishida)                    5,316,321                    May 31, 1994                        
              Komuro et al. (Komuro)                    5,851,659                    Dec. 22, 1998                       
              Takiguchi et al. (Takiguchi)       GB 2 243 262 A                      Oct. 23, 1991                       



                     Claims 3, 6, 8 and 10 stand rejected under 35 U.S.C. § 112, first paragraph, as                     
              containing subject matter which was not described in the specification in such a way as                    
              to reasonably convey to one skilled in the relevant art that the appellants, at the time                   
              the application was filed, had possession of the claimed invention.                                        


                     Claims 3, 6, 8 and 10 stand rejected under 35 U.S.C. § 112, second paragraph,                       
              as being indefinite for failing to particularly point out and distinctly claim the subject                 
              matter which the appellants regard as the invention.                                                       









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