Appeal No. 2001-1037 Page 3
Application No. 08/550,002
Examiner's Answer (Paper No. 12) and the Office action mailed by the examiner
March 13, 1997 (Paper No. 4); and (4) the above-cited prior art reference.
On consideration of the record, including the above-listed materials, we reverse
the examiner's rejection under 35 U.S.C. § 102(e).
Discussion
Initially, we note that applicants' claims are couched in terms of a shaving
system; but the "system" is but a method of shaving consisting of four manipulative
steps. This anomalous manner of claim drafting has given us pause - and some
measure of difficulty - in evaluating the merits of the appeal. As best we can judge, the
claims cover a method of shaving consisting of four steps and, on that basis, we have
reviewed the examiner's rejection. We note that applicants themselves characterize
their claims as drawn to a method of shaving (Appeal Brief, Paper No. 11, section V
SUMMARY OF INVENTION; and paragraph bridging pages 6 and 7).
On return of this application to the Examining Corps, we recommend that
applicants and the examiner consider whether it would be more appropriate or more
accurate to amend the claims so that they are not couched in terms of a shaving
system; but instead are drawn, in a straightforward manner, to a method of shaving.
For a prior art reference to anticipate in terms of 35 U.S.C. § 102, every element
of the claimed invention must be identically shown in a single reference. Diversitech
Corp. v. Century Steps, Inc., 850 F.2d 675, 677, 7 USPQ2d 1315, 1317 (Fed. Cir.
1988). Here, the examiner has not established that Moore describes the gel cream
limitation recited in claim 1. Accordingly, the examiner has not established a prima
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