l 1/133,373
`Application No.:
`Examiner: E. 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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`Objections to the drawings
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`The examiner has objected to the drawings for failing to show every feature of the
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`invention specified in the claims.
`In particular,
`the examiner asserts that “the lower
`portion of the head portion being smaller in circumference than the upper portion of the
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`head portion must be shown or the feature(s) cancelled from the claim(s).”
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`It is respectfully submitted that this feature is clearly shown in Figs. 8 to 12B of the
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`present application. As shown in Figs. 8 to 12B, the head portion 20 includes an upper
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`portion and a lower portion. The upper portion corresponds to a portion above a gap 4,
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`and the lower portion corresponds to a portion from the gap 4 to a lowest end of a
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`protmsion 21C. As clearly shown in Figs. 8 to 12B, a circumference of a part of the lower
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`portion corresponding to the gap 4 and the portions below the gap 4 is smaller than those
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`of the upper portion of the head portion 20 and a hand-holdable portion 10.
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`Accordingly, every feature of claim 5 is fully shown in, and supported by, the
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`drawings, and therefore withdrawal of the objection is respectfully requested.
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`Rejection of claim 5 under 35 U.S.C. § 112, First Paragrth
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`Claim 5 presently stands rejected as failing to comply with the written description
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`requirement. The examiner notes that the phrase “at least” in line 3 was not discussed or
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`supported by the original disclosure. Accordingly, the phrase “at least” has been deleted.
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`The examiner also asserts that is “the lower portion of the head portion being
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`smaller in circumference than the upper portion of the head portion is indefinite because
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`the disclosure seems to teach away from the claim 5.” However, as described above in
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`reference to the drawing objection,
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`the feature is clearly shown in Figs. 8 to 12B.
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`Referring to the discussion of Figs. 8 to 12B (at pages 16 to 20 of the present application)
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`

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`Application No.: 11/133,373
`Examiner: E. Landrum
`Art Unit: 3724
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`the lower portion is clearly described comprising lower portion 21D of the first head
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`member and lower portion 22A of the second head member.
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`Referring to both the written description and the figures, it is clear that the lower
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`portion 21D of the first head member and lower portion 22A of the second head member
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`form a spherical surface which is pivotally disposed in the hand holdable portion 10.
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`Thus, it is respectfully submitted that the lower portion is sufficiently defined within the
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`written description that, by reference to the figures, the lower portion is clearly smaller in
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`circumference than the upper portion of the head portion immediately above the lower
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`portion.
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`Further, Applicant notes that the examiner has not explained how the disclosure
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`teaches away from claim 5.
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`Accordingly, withdrawal of the rejection is respectfillly requested.
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`Rejection ofclaims 1-3 and 5 under 35 U.S.C. § 102(b)
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`Claims 1-3 and 5 presently stand rejected as being anticipated by Eslambolchi et a1
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`(U.S. 6,141,878). This rejection is respectfully traversed for at least the following reasons.
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`Eslambolchi fails to disclose or suggest that a “head portion has a driven member
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`reciprocating along a length direction of the trimming system.”
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`“A claim is anticipated only if each and every element as set forth in the claim is
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`found, either expressly or inherently described, in a single prior art reference.” Verdegaal
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`Bros. v. Union Oil C0. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir.
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`1987) (emphasis added). “The identical invention must be shown in as complete detail as
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`is contained in the
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`claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9
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`USPQ2d 1913, 1920 (Fed. Cir. 1989) (emphasis added). “The elements must be arranged
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`as required by the claim” In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (fed. cir. 1990).
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`In accordance with the present invention, the term “the trimming system” refers to
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`the entire trimming system including the head portion and the hand-holdable portion.
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`Accordingly, the driven member of the head portion reciprocates along the same direction
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`

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`Application No.: 11/133,373
`Examiner: E. Landrum
`Art Unit: 3724
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`of not only a lengthwise direction of the head portion, but also along a lengthwise
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`direction of the hand-holdable portion (as well as a lengthwise direction of the entire
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`trimming system which includes both the head portion and the hand—holdable portion).
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`However, according to Eslambolchi, a reciprocating direction of the head portion is
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`not a length direction of the cutting apparatus (that is, the whole system which includes a
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`head portion and a housing) but is perpendicular to the length direction of the cutting
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`apparatus.
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`Eslambolchi also fails to disclose or suggest a pivoting head portion that has a
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`driven member. Eslambolchi
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`teaches reciprocating blades 22, 24 that are pivotally
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`attached to a main body. The examiner interprets the reciprocating blade 22 as a head
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`portion pivotally supported with respect to the main body. However, claim 1 required that
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`the head portion have (not be) a driven member and be pivotally supported with respect to
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`the main body. The reciprocating blade 22 is, but does not have a reciprocating member.
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`Because the two reciprocating blades 22, 24 are the same (and both mounted to the
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`housing), but disposed to move in opposite directions, it simply does not make sense to
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`interpret one of the reciprocating blades as a head portion and the other reciprocating
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`blade differently as a reciprocating member. Accordingly, Eslambolchi cannot be
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`interpreted as teaching a pivoting head portion that has a driven member.
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`Further, applicant notes that, while Eslambolchi teaches reciprocating blades 22,
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`24 that pivot (in opposite directions from one another) about a common pivot point 26,
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`these reciprocating blades cannot be construed as a pivoting head portion or as a head
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`portion pivotally supported by the main body. To the contrary, taking the reciprocating
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`blades together, it is respectfully submitted that a head portion defined by both of the
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`blades 22, 24 does not pivot at all, since due to the reciprocating action of the blades 22,
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`24, whereby the blades 22, 24 move in an opposite “mirror image” fashion, a centerline of
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`the blades 22, 24 does not change, despite movement of the individual blades. Thus, the
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`blades 22, 24 cannot be reasonably construed as a pivoting head portion.
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`

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`Application No.: 11/133,373
`Examiner: E. Landrum
`Art Unit: 3724
`
`It is respectfully submitted that Eslambolchi fails to disclose or suggest each and
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`every element as set forth in claim 1, and therefore Eslambolchi cannot anticipate claim 1.
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`Accordingly, it is respectfully submitted that claim 1, and dependent claims 2, 3, and 5,
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`are allowable over the cited reference and withdrawal of the rejection is respectfully
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`requested.
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`Rejection ofclaim 4 under 35 U.S.C. § 1031a)
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`Claim 4 presently stands rejected as being unpatentable over Eslambolchi. This
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`rejection is respectfully traversed for the following reasons.
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`To establish a prima facie case of obviousness, three basic criteria first must be
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`met. First,
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`there must be some suggestion or motivation, either
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`in the references
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`themselves or in the knowledge generally available to one of ordinary skill in the art, to
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`modify the references or to combine the references teachings. Second, there must be a
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`reasonable expectation of success. Finally, the prior art references (or references when
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`combined) must teach or suggest all the claim limitations. (MPEP 2143).
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`Further,
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`the teaching or suggestion to make the claimed combination and the
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`reasonable expectation of success must both be found in the prior art, not in applicant’s
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`disclosure. In re Vaeck, 947 F 2d 488,20 USPQ2d l438(fed.cir.1991).
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`To establish prima facie obviousness of a claimed invention, all the claim
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`limitations must be taught or suggested by the prior art.
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`In re Royka, 490 F.2d 981, 180
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`USPQ 580 (CCPA 1974). "All words in a claim must be considered in judging the
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`patentability of that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165
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`USPQ 494, 496 (CCPA 1970) (emphasis added). If an independent claim is non-obvious
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`under 35 U.S.C. 103, then any claim depending therefrom is non-obvious. In re Fine, 837
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`F .2d 1071, 5 USPQ2d 1596(Fed. Cir.1998).
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`It is respectfully submitted that, as discussed above, Eslambolchi fails to disclose
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`or suggest each and every element set forth in claim 1 of the present application.
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`Accordingly, because claim 4 depends from claim 1, Eslambolchi fails to disclose or
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`

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`Application No.: 11/133,373
`Examiner: E. Landrum
`Art Unit: 3724
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`suggest each and every element set forth in claim 4. Accordingly,
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`it
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`is respectfully
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`submitted that claim 4 is allowable for the same reasons as claim 1.
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`Regarding the additional limitations recited in claim 4, the examiner notes that
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`Eslambolchi fails to teach “the gap portion between the head portion and the main body
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`being small enough to prevent a user’s skin from being pinched there-between.”
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`Applicant agrees that Eslambolchi fails to teach these limitations, and submits therefore
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`that it would not be obvious to alter the apparatus of Eslambolchi accordingly.
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`As discussed above, Eslambolchi does not teach or suggest a pivoting head
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`portion. Because Eslambolchi does not teach or suggest a pivoting head portion, it simply
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`cannot be said that Eslambolchi teaches or suggests a gap portion between the head
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`portion and the main body being small enough to prevent a user’s skin from being pinched
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`there-between. Further, because Eslambolchi does not teach or suggest a pivoting head
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`portion, there is no basis for an argument that a person of ordinary skill in the art could
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`conceive of any modification of such a feature to arrive at the present invention, since the
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`feature that would need to be modified is simply not present in Eslambolchi’s disclosure.
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`Accordingly,
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`it
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`is respectfully submitted that Eslambolchi fails to disclose or
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`suggest each and every element of claim 4 of the present application, and there is no
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`motivation or suggestion to modify Eslambolchi
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`to arrive at
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`the present
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`invention.
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`Therefore, Eslambolchi fails to form a prima facie basis for obviousness of claim 4.
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`Withdrawal of the rejection is respectfully requested.
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`Conclusion
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`Every effort has been made to place the application fully in condition for
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`allowance, and to remove all issues raised by the Examiner in the Official Action.
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`In View of the amendments to the claims, and in further view of the foregoing
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`remarks, it is respectfully submitted that the application is in condition for allowance.
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`Accordingly, it is requested that claims 1-5 be allowed and the application be passed to
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`issue.
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`Application No.: 11/133,373
`Examiner: E. Landrum
`Art Unit: 3724
`
`If any issues 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
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`Alexandria, Virginia 22314-1 176
`Phone: (703) 683-0500
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`Date: April 26, 2006
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`Respectfully submitted,
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`E ER
`. C
`JO
`Attorney for Applicant
`Registration No. 47,921
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