Ex parte BENZINGER - Page 2




                     Appeal No. 98-2810                                                                                                                                                
                     Application 08/471,457                                                                                                                                            


                     6, 12, 16, 17 and 21 through 26 have been canceled.2                                                                                                              

                                Appellant’s invention relates to a shaving kit wherein a razor is allowed to soak in a soaking                                                         

                     container in a solution of witch hazel after each use, typically overnight, and is then used while wet with                                                       

                     the solution for a subsequent shave.  On page 5 of the specification, it is noted that the resulting shave is                                                     

                     rapid and comfortable, and that if there happen to be cuts or nicks the witch hazel alleviates pain as well                                                       

                     as constricting the cuts/nicks to rapidly interrupt bleeding.  In addition, on page 6 of the specification, it                                                    

                     is noted that using appellant’s shaving system/kit substantially extends the useful life time of the cutting                                                      

                     edges of the blade.  Independent claims 19 and 27 are representative of the subject matter on appeal                                                              

                     and a copy of  those claims, as reproduced from the Appendix to appellant’s brief, is attached to this                                                            

                     decision.                                                                                                                                                         



                                There are no prior art references relied upon by the examiner in rejecting the appealed claims.                                                        



                                Claim 19 stands rejected under 35 U.S.C. § 112, first paragraph, as being based on a                                                                   

                     specification that fails to provide an enabling disclosure.  In regard to the embodiment of the invention                                                         

                     seen in Figure 4 and described on pages 3 and 7 of the specification, the examiner urges that                                                                     

                               “Applicant fails to disclose how a kit for shaving could be useful for medical purposes,                                                               

                                2Decided concurrently herewith is the appeal in appellant's copending application Serial No.                                                           
                     08/471,458, filed June 6, 1995 (Appeal No. 98-2837).                                                                                                              
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