Ex Parte Chinou et al - Page 4



          Appeal No. 2005-2453                                                        
          Application No. 10/102,923                                                  

          that it would have been obvious for one of ordinary skill in the            
          art to coat all the surfaces of a piston ring with the hard                 
          carbon film of Iwashita, taking into account a typical                      
          cost/benefit analysis for doing so.  While appellants point to              
          the difference in composition between the hard carbon film of               
          Iwashita and the hard film of Tanaka, we are not persuaded by               
          appellants that such a difference undermines the obviousness of             
          coating the entirety of a piston ring with the hard carbon film             
          of Iwashita.  Also, we note that the hard film of Tanaka may                
          contain carbon.                                                             
               Appellants direct our attention to the comparative data at             
          Table 2, page 24 of the present specification "to compare                   
          especially the differences between the piston ring and piston               
          ring-piston examples of Example 1 and Comparative Example 1"                
          (page 9 of principal brief, second paragraph).  Appellants submit           
          that "[a] comparison of the two above-cited examples shows                  
          superior peeling resistance, and ring top, bottom and inner                 
          surface wear resistance index in Example 1 over the corresponding           
          values for Comparative Example 1" (id.).                                    
               Our review of the specification data leads us to the same              
          conclusion drawn by the examiner, i.e., that the evidence of                
          obviousness represented by the combined teachings of Iwashita and           
          Tanaka outweighs the evidence of nonobviousness in the form of              
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