Appeal No. 2006-1275 Παγε 4
Application No. 10/691,954
the pointed ridges 24 and valleys 26 such that the profile of the ridges and valleys
remains after the coating process (col. 3, lines 5 to 12).
In our view, the ridges or recesses are formed on the skirt itself not on the
coating. As such, we agree with the appellants that Schenkel does not describe a
piston skirt having a coating which has recesses formed thereon as required by claim 1.
Therefore , we will not sustain the rejection as it is directed to claim 1 or claim 10
dependent thereon. We will likewise not sustain this rejection of claims 12 to 14 and 16
and 17 because each of claims 12 and 16, from which claims 14 and 17 depend, recite
that the coating on the skirt has a plurality of recesses formed thereon.
We will also not sustain the rejection of claims 11 and 15, which are dependent
on claims 1 and 12 respectively, under 35 U.S.C. § 103 as being unpatentable over
Schenkel because we agree with the appellants that Schenkel does not disclose or
suggest a coating on a piston skirt which has a plurality of recesses formed thereon.
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