Application No.: 11/133,373
`Examiner: E. F. Landrum
`ArtUnit: 3724
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`REMARKS
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`Reconsideration of the pending application is respectfully requested on the basis of
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`the following particulars:
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`Rejection ofclaims 1 and 3-5 under 35 U.S.C. § 1031a)
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`Claims 1, 4, and 5 presently stand rejected as being unpatentable over Siegler (U.8.
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`5,261,162) in view of Lonnecker (US. 4,651,420), and claim 3 is rejected as being
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`unpatentable over Siegler. These rejections are respectfully traversed for at least the
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`following reasons.
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`Claim 1
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`is presently amended to more clearly describe the present invention.
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`In
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`particular, claim 1 is amended to point out that the claimed personal trimming system is
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`for trimming hair from a body surface, and that a direction of a pivoting axis of the head
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`portion is substantially perpendicular to the body surface when the head portion is placed
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`in a cutting position proximate to the body surface. The amendments to claim 1 are
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`supported by the original specification, and no new matter is presented.
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`It is respectfully submitted that neither Siegler nor Lonnecker disclose or suggest a
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`personal trimming system for trimming hair from a body surface. More particularly, it is
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`respectfully submitted that neither Siegler nor Lonnecker disclose or suggest a personal
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`trimming system for trimming hair from a body surface wherein a direction of a pivoting
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`axis of the head portion is substantially perpendicular to the body surface when the head
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`portion is placed in a cutting position proximate to the body surface. Accordingly, these
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`references fail to form a prima facie case of obviousness of the claimed invention.
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`The basic requirements of a prima facie case of obviousness are set forth in the
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`MPEP §2143. This section states that to establish a prima facie case of obviousness, three
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`basic criteria first must be met. First, there must be some suggestion or motivation, either
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`in the references themselves or in the knowledge generally available to one of ordinary
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`skill in the art, to modify the references or to combine the references teachings. Second,
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`Application No.2 11/133,373
`Examiner: E. F. Landrum
`ArtUnit: 3724
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`there must be a reasonable expectation of success. Finally, the prior art references (or
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`references when combined) must teach or suggest all the claim limitations.
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`The teaching or suggestion to make the claimed combination and the reasonable
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`expectation of success must both be found in the prior art, not in applicant’s disclosure.
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`In
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`re Vaeck, 947 F 2d 488,20 USPQ2d l438(fed.cir.1991). Section 2143.03 states that all
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`claim limitations must be taught or suggested by the prior art.
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`In re Royka, 490 F.2d
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`981,180 USPQ 580(CCPA 1974). “All words in a claim must be considered in judging
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`the patentabillity of that claim against the prior art.” In re Wilson, 424 F .2D 1382, 1385,
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`165 USPQ 494,496(CCPA 1970). If an independent claim is nonobvious under 35 U.S.C.
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`103, then any claim depending therefrom is nonobvious. In re Fine, 837 F .2d 1071, 5
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`USPQ2d 1596(Fed. Cir.1998).
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`The present invention as defined in the amended claim 1 is directed to a personal
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`trimming system for trimming hair from a body surface, including an elongated main body
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`having a motor and a part of a driving unit for converting a rotation of the motor into a
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`reciprocating motion, the elongated main body having a lengthwise dimension that defines
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`a length direction of the trimming system; and an elongated head portion extending from
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`an end of said main body generally along said length direction, the head portion having a
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`driven member reciprocating generally along said length direction, wherein the head
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`portion'is pivotably supported with respect to the main body, and a gap is provided
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`between the main body and a step formed on a boundary between an upper portion of the
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`head portion and a lower portion of the head portion.
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`_ Accordingly,
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`it
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`is apparent that the present
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`invention is related to a personal
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`trimming system for trimming hair from a body surface. Further, the amended claim 1
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`points out
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`that a direction of a pivoting axis of the head portion is substantially
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`perpendicular to the body surface when the head portion is placed in a cutting position
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`proximate to the body surface.
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`

`

`Application No.: 11/133,373
`Examiner: E. F. Landrum
`AItUnit: 3724
`
`In contrast, Siegler (US 5,261,162) discloses a mechanical tree pruning device, and
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`Lonnecker (US 4,651,420) discloses a universal vegetation cutter. Clearly, neither of
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`these references is directed to trimming hair from a body surface.
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`It
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`is respectfully
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`submitted that persons skilled in the art, relating to trimming hair from a body surface,
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`would have no reason to turn to the teachings of these references relating to power tools
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`for trimming hedges, cutting brush, and the like. On the contrary, it would appear that
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`serious bodily injury would result if the device disclosed in either Siegler or Lonnecker
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`were used in an attempt to trim hair from a body surface.
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`Further, neither Siegler nor Lonnecker disclose that a direction of a pivoting axis
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`of a head portion is substantially perpendicular to a body surface when the head portion is
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`placed in a cutting position proximate to the body surface.
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`For at least these reasons, it is respectfully submitted that the cited references fail
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`to form a prima facie case of obviousness of claim 1, and therefore claim 1, along with
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`claims 3-6 which depend from claim 1, are allowable over the cited references.
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`New claim 6
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`New claim 6 is added. Claim 6 depends from claim 1, and it
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`is respectfully
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`submitted that claim 6 is allowable at least due to its dependency from claim 1. Further, it
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`is respectfully submitted that claim 6 recites material which is novel and non-obvious in
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`view of the prior art of record, and it is therefore respectfully submitted that claim 6 is
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`fully patentable over all the references of record.
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`Conclusion
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`In view of the amendments to the claims, and in further view of the foregoing
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`remarks,
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`it is respectfully submitted that the application is in condition for allowance.
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`Accordingly, it is requested that claims 1 and 3-6be allowed and the application be passed
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`to issue.
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`Application No.: 11/133,373
`Examiner: E. F. Landrum
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`Art Unit: 3724
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`If any issues
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`remain that may be resolved by a telephone or
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`facsimile
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`communication with the Applicant’s attorney,
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`the Examiner is invited to contact the
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`undersigned at the numbers shown.
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`BACON & THOMAS, PLLC
`625 Slaters Lane, Fourth Floor
`Alexandria, Virginia 22314-1176
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`Phone: (703) 683-0500
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`Date: August 30, 2007
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`Respectfully submitted,
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`'
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`-
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`, /
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`R. SCHAE ER
`JO
`Attorney for Applicant
`Registration No. 47,921
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`