IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. TRE MILANO, LLC Petitioner. TF3 LIMITED Patent Owner

Transcription

1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD TRE MILANO, LLC Petitioner v. TF3 LIMITED Patent Owner Patent No. 8,651,118 Issue Date: February 18, 2014 Title: HAIR STYLING DEVICE Attorney Docket No.: 51606IPR IPR Case No: IPR PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,651,118

2 TABLE OF CONTENTS I. INTRODUCTION... 1 II. MANDATORY NOTICES UNDER 37 C.F.R A. Real Party-in-Interest... 1 B. Related Matters... 1 C. Designation of Lead and Backup Counsel... 1 D. Notice of Service Information... 2 II. GROUNDS FOR STANDING... 2 A. Certification of the '118 Patent May Be Contested by Petitioner... 2 B. Fee for Inter Partes Review ( 42.15(a))... 3 IV. THRESHOLD REQUIREMENTS FOR INTER PARTES REVIEW... 3 V. STATEMENT OF PRECISE RELIEF REQUESTED... 3 VI. STATEMENT OF REASONS FOR REQUESTED RELIEF... 4 A. Introduction... 4 B. Exhibits... 4 C. Expert Declaration... 4 D. Construction of Terms Used in Claims Adjacent Chamber Annular Surrounds... 5 E. Level of Ordinary Skill in the Art... 6 F. Figures... 6 G. Explanation of Grounds for Unpatentability... 6 Ground 1: Claims 1-5 and 11 of the '118 patent are invalid under 35 U.S.C. 102(b) over U.S. Patent No. 4,148,330 to Gnaga ("Gnaga")... 7 i

3 Ground 2: Claims 1-5 and 11 are invalid under 35 U.S.C. 102(b) over Japanese Publication No. JU-A S to Hoshino ("Hoshino") Ground 3: Claims 1 and 3-5 are invalid under 35 U.S.C. 102(b) over U.S. Patent Publication US2010/ to Hottenrott ("Hottenrott") Ground 4: Claims 1-5 and 11 are invalid under 35 U.S.C. 102(b) over United Kingdom Patent Specification No. 1,036,583 to Gillette ("Gillette") Ground 5: Claims 1, 3-5 and 11 are invalid under 35 U.S.C. 102(b) over International Patent Publication WO2009/ to De Benedictis ("De Benedictis 2009") Ground 6: Claim 2 is unpatentable under 35 U.S.C. 103 over De Benedictis 2009 in view of United Kingdom Patent No. GB to Dinger ("Dinger"), Gnaga, Hoshino, or Gillette VII. CONCLUSION ii

4 TABLE OF EXHIBITS Exhibit No. Title 1001 U.S. Patent No. 8,651,118 to De Benedictis 1002 Declaration of Barry Prehodka 1003 Curriculum Vitae of Barry Prehodka 1004 U.S. Patent No. 4,148,330 to Gnaga 1005 Japanese Publication No. JU-A S to Hoshino 1006 English Translation of JU-A S to Hoshino 1007 Certification of Kazuko Ishiwatari 1008 Certification of Steven H. Zaveloff 1009 U.S. Patent Publication US2010/ to Hottenrott 1010 United Kingdom Patent Specification No. 1,036,583 to Gillette 1011 International Patent Publication WO2009/ to De Benedictis 1012 United Kingdom Patent Specification No. 302,952 to Dinger 1013 Declaration of Katherine B. Sales 1014 Dictionary Definition of adjacent 1015 Dictionary Definition of chamber 1016 Dictionary Definition of enclosed 1017 Dictionary Definition of annular 1018 Dictionary Definition of surrounds iii

5 I. INTRODUCTION Pursuant to 35 U.S.C and 37 C.F.R , Tre Milano, LLC ( Petitioner ) petitions the Patent Trial and Appeal Board (PTAB) to institute an inter partes review of claims 1-5 and 11 of United States Patent No. 8,651,118 ( the 118 Patent, Exhibit #1001), issued on February 18, According to the records of the United States Patent and Trademark Office (USPTO), TF3 Limited owns the 118 Patent. Conair Corporation ( Conair ) claims to be a licensee of the 118 Patent. II. MANDATORY NOTICES UNDER 37 C.F.R A. Real Party-in-Interest The real party-in-interest of this petition is Tre Milano, LLC ( Petitioner ), 5826 Uplander Way, Culver City, CA B. Related Matters The 118 Patent is asserted in the litigation matter Conair Corporation v. Tre Millano, LLC, Case No. Civil Action No. 3:14-cv AWT (D. Conn.) Petitioner has not yet filed its answer and counterclaims in the action. C. Designation of Lead and Backup Counsel Lead Counsel Laura M. Lloyd, Ph.D. LEECH TISHMAN FUSCALDO & LAMPL Phone: (626) Fax: (626)

6 100 Corson Street, Third Floor Pasadena, CA Backup Lead Counsel Jeffrey G. Sheldon, Esq. LEECH TISHMAN FUSCALDO & LAMPL 100 Corson Street, Third Floor Pasadena, CA D. Notice of Service Information USPTO Reg. No. 54,461 Phone: (626) Fax: (626) USPTO Reg. No. 27,953 Please direct all correspondence regarding this proceeding to lead counsel at the address shown above. Petitioner consents to service by at and with a courtesy copy sent to ipdocket@leechtishman.com. III. GROUNDS FOR STANDING A. Certification the 118 Patent May Be Contested by Petitioner Pursuant to 37 C.F.R. 104(a), Petitioner certifies that the patent for which review is sought is available for inter partes review and Petitioner is not barred or estopped from requesting this inter partes review. Neither Petitioner, nor any party in privity with Petitioner, has filed a civil action challenging the validity of any claim of the 118 Patent. The 118 Patent has not been the subject of a prior inter partes review by Petitioner or a privy of Petitioner. Petitioner certifies this petition is filed within one year of the date of service of a complaint alleging infringement of the 118 Patent. Petitioner was served with 2

7 a complaint alleging infringement of the 118 Patent on December 12, Because the date of this petition is less than one year from December 12, 2014, this petition complies with 35 U.S.C. 315(b). B. Fee for Inter Partes Review ( 42.15(a)) Pursuant to 37 C.F.R , $23, is being paid at the time of filing this Petition, charged to Deposit Account No Should any further fees be required by the present Petition, the PTAB is hereby authorized to charge the above referenced Deposit Account. IV. THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW A petition for inter partes review must demonstrate a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. 314(a). This Petition easily meets this threshold. Claims 1-5 and 11 of the 118 Patent are taught in the prior art. Additionally, for the Grounds for Unpatentability under 35 U.S.C. 103, the motivation to combine is provided. V. STATEMENT OF PRECISE RELIEF REQUESTED Petitioner respectfully requests that claims 1-5 and 11 of the 118 Patent be canceled based on the following six Grounds for Unpatentability. 3

8 VI. STATEMENT OF REASONS FOR REQUESTED RELIEF A. Introduction The basis for requesting relief is articulated in the Declaration of Barry Prehodka ( Prehodka ; Ex. 1002). As clearly stated by Mr. Prehodka and detailed below, the claims 1-5 and 11 of the 118 Patent are neither new nor unobvious in view of the prior art. B. Exhibits The Exhibits 1004, , and are authenticated by the Declaration of Katherine Sales (Ex. 1013). Exhibit 1005 is authenticated by the Certification of Kazuko Ishiwatari (Ex. 1007). Exhibit 1006 is an English translation of Exhibit 1005, and has been certified by Steven H. Zaveloff (Ex. 1008). C. Expert Declaration Barry Prehodka s declaration is attached as Exhibit Mr. Prehodka is an expert in the design of hair styling tools. Prehodka Ex D. Construction of Terms Used in the Claims Solely for purposes of this proceeding, the following discussion proposes construction of several terms in claims 1 and 2. Claim terms not included in the following discussion are to be given their broadest reasonable interpretation in 4

9 light of the specification as commonly understood by those of ordinary skill in the art. These prepared definitions are in accordance with dictionary definitions and are as one of ordinary skill in the art would understand the terms. (Prehodka Ex ). 1. Adjacent Adjacent means close to. American Heritage Dictionary, 4th Edition, p. 21, (Ex. 1014) 2. Chamber Chamber means an enclosed space or compartment. American Heritage Dictionary, 4th Edition, p. 308, (Ex. 1015) The term enclosed means to surround on all sides; close in. American Heritage Dictionary, 4th Edition, p. 588, (Ex. 1016) The chamber (16) disclosed in the 118 patent is surrounded and closed off on all sides except for a primary opening that can be utilized for insertion of hair and a secondary opening that can be utilized for removal of hair. Thus a chamber is a space or cavity surrounded or closed off on all sides except for a primary opening that can be utilized for insertion of hair, and a secondary opening that can be utilized for removal of hair. 3. Annular Annular means in the form of a ring. American Heritage Dictionary, 4th Edition, p. 73, (Ex. 1017) 4. Surrounds Surrounds means to enclose or confine on all 5

10 sides. American Heritage Dictionary, 4th Edition, p. 1743, (Ex. 1018) Therefore, surrounds as used in the 118 patent means encloses on all sides. E. Level of Ordinary Skill in the Art At the time the 118 patent was filed, as detailed in Prehodka Ex. 1002, 11, a person of ordinary skill in the art of designing hair styling tools would have had the following experience: 1. Training in mechanical engineering courses including in design and production processes; and 2. At least five (5) years practical experience in the design, development and production of hair styling devices. F. Figures The annotated figures below are provided to explain the grounds for unpatentability and demonstrate the features and operation of the devices shown in the six prior art references discussed below. The figures truly and correctly represent those six devices and how they operate. Prehodka Ex G. Explanation of Grounds For Unpatentability Claims 1-5 and 11 of the 118 Patent are unpatentable on the following grounds below. 6

11 Ground 1: Claims 1-5 and 11 of the 118 Patent are invalid under 35 U.S.C. 102(b) over U.S. Patent No. 4,148,330 to Gnaga ( Gnaga ). Claims 1-5 and 11 of the 118 Patent are unpatentable under 35 U.S.C. 102(b) over U.S. Patent No. 4,148,330 to Gnaga ( Gnaga ) (Ex. 1004), (Prehodka Ex. 1002, 30a-30t). In the alternative, claims 1-5 and 11 are unpatentable under 35 U.S.C. 103 over Gnaga. The Gnaga patent issued on April 10, 1979, and is therefore prior art under 35 U.S.C. 102(b). Gnaga was not considered by the USPTO during prosecution of the 118 Patent. Gnaga describes a device for automatically winding hair on a removable hair curler for hair styling, exactly as specified in claims 1-5 and 11 of the 118 Patent. Gnaga is described below with regard to the Gnaga Figures 1-6. As shown in Gnaga Figure 1, the Gnaga device has a housing D containing a rotating shaft 28 driven by a motor. The housing D has a slot 54 for insertion of a user s hair and a hook 58 for retaining a hair curler A inside the housing D. 7

12 The hair curler A (colored in blue) is formed from two elements, an internal element B and an external rotating element C (Gnaga Figure 2). The coupling of the internal element B and the external rotating element C creates a hollow space 17 between the internal element B and the external rotating element C. The internal element B contains a rod 22 (colored in red) to retain the assembled curler A inside the device during operation. (Gnaga Figures 2 and 3) As shown in Gnaga Figure 2, in use, the hair curler A is formed by coupling the internal element B to the external rotating element C. The assembled hair curler A is then inserted into the housing D and onto the rotating shaft 28. Next, the hair curler A is locked in position in notch 70 the housing D by rotating the hook 58 counter-clockwise and the rod 22 clockwise, as shown by the arrow in Gnaga Figure 3. The notch 70 locks the rod 22 in its position within the housing D. (Gnaga Figure 3) 8

13 Next, a lock of the user s hair is inserted into the slot 54. (Gnaga Figure 4) Next, the device s motor is activated, causing the external rotating element C to rotate, and the user s hair is inserted into the hollow space 17 between the nonrotating internal element B and the external rotating element C. As shown in Gnaga Figure 5, this results in the user s hair being wound around the non-rotating internal element B. Once the user s hair is wound around the internal element B of the hair curler A, the hook 58 is rotated clockwise to unlock the hair curler A, and then the hair curler A is removed from the housing D. (Gnaga Figure 5) The hair curler A is left on the user s hair after it is removed from the device. 9

14 The grounds for unpatentability are explained narratively below using the language of the 118 Patent claims, annotated drawings, based on the Gnaga drawings, and the claim chart in Table 1. Claim 1 of the 118 Patent recites: A hair styling device The device in Gnaga is used to style hair. having: a body defining a chamber adapted to accommodate a length of hair, the chamber having a primary opening through which the length of hair may pass into the chamber; As shown in Gnaga Figure 6, Gnaga s external rotating element C and the housing D form a body defining a chamber that is adapted to accommodate a length of hair. The chamber s slot 54 is a primary opening through which the length of hair may, and does, pass into the chamber. 10

15 a rotatable element adapted to engage the length of hair adjacent to the primary opening; The external rotating element C is a rotatable element. The rotatable element C is adapted to, and does, engage the length of hair adjacent to the primary opening 54. See Gnaga Figure 6. an elongate member around which, in use, the length of hair is wound by the rotatable element, the elongate member having a free end; The internal element B of the hair curler A is an elongate member. Hair is wound around the elongate member B by the rotatable element C, as shown by Gnaga Figure 5. The elongate member B has a free end. See Gnaga Figure 6. the chamber having a secondary opening through which the length of hair may pass out of the chamber, the secondary opening being located adjacent to the free end [of the elongate member]; and Gnaga contains a chamber with a secondary opening through which the length of hair may pass out of the chamber. The secondary opening is adjacent to the free end of the elongate member B. See Gnaga Figure 6. a movable abutment which can engage the length of hair in use, the movable abutment having an open position in which the length of hair can pass through the secondary opening, and a closed position in which the length of hair is retained within the chamber, wherein the movable abutment is located within one of (i) the secondary 11

16 opening, (ii) the primary opening, and (iii) a passageway connecting the secondary opening to the primary opening. Gnaga s rod 22 is a movable abutment. The movable abutment/rod 22 is located in the secondary opening and engages the length of hair in use. The movable abutment/rod 22 has an open position in which the length of hair can pass through the secondary opening, and a closed position in which the hair is retained within the chamber. See Gnaga Figures 3 and 6. Not only does the device described in Gnaga meet all limitations of independent claim 1, it also meets the limitations of dependent claims 2-5 and 11. Claim 2 calls for A hair styling device according to claim 1, wherein the secondary opening is annular and surrounds the free end of the elongate member. The secondary opening in Gnaga is annular and surrounds the free end of the elongate member B. See Gnaga Figure 6. Claim 3 calls for A hair styling device according to claim 1, wherein the movable abutment is located within the secondary opening. Gnaga describes the movable abutment/rod 22 located within the secondary opening. See Gnaga Figures 3 and 6. Claim 4 calls for A hair styling device according to claim 1, wherein the secondary opening is permanently connected to the primary opening. Gnaga s 12

17 device depicts the secondary opening as permanently connected to the primary opening 54. See Gnaga Figure 6. Claim 5 calls for A hair styling device according to claim 1, wherein the movable abutment is located within one of (i) the secondary opening and (ii) the primary opening, and wherein the secondary opening is connected to the primary opening by way of a passageway. The movable abutment/rod 22 is located within the secondary opening, and the secondary opening is connected to the primary opening 54 by way of a passageway. See Gnaga Figure 6. Claim 11 calls for A hair styling device according to claim 1, wherein the movable abutment is maintained in its closed position while the rotatable element is rotating. The movable abutment/rod 22 is maintained in its closed position while the rotatable element C is rotating. See Gnaga Figure 6. As described above, claims 1-5 and 11 of the 118 Patent are expressly disclosed by the Gnaga patent, since a person of ordinary skill in the art would conclude that each and every limitation of the invention as claimed in these patent claims is found in this prior art reference. For these reasons, claims 1-5 of the 118 Patent are invalid as anticipated under 35 U.S.C. 102(b). To the extent that there may be any differences between the subject matter of claims 1-5 and 11, any such differences are trivial and it would have been obvious 13

18 under 35 U.S.C. 103 for one of ordinary skill in the art to modify Gnaga to arrive at the subject matter of claims 1-5 and 11 of the 118 Patent. The following claim chart shows the invalidity of claims 1-5 and 11. TABLE 1 Claims of the 118 Patent 1. A hair styling device having: a body defining a chamber adapted to accommodate a length of hair, the chamber having a primary opening through which the length of hair may pass into the chamber; a rotatable element adapted to engage the length of hair adjacent to the primary opening; an elongate member around which, in use, the length of hair is wound by the rotatable element, the elongate member having a free end; the chamber having a secondary opening through The Limitations of the 118 Patent are Disclosed in the Prior Art Patent to Gnaga (US ) The external rotating element C and the housing D form a body defining a chamber that is adapted to accommodate a length of hair. (Column 4, lines 9-22, Figure 6) Slot 54 is the primary opening of the chamber through which the length of hair may pass into the chamber. (Column 4, lines 9-22, Figure 6) The external rotating element C is the rotatable element that is adapted to engage the length of hair adjacent to the primary opening 54 (Column 4, lines 9-22, Figure 6) Internal element B of the hair curler A is an elongate member that the hair is wound around by the rotatable element C (Column 4, lines 9-22, Figures 1, 2 and 6) The elongate member B has a free end (Figures 1-5) The chamber has a secondary opening through which the length of hair may pass 14

19 which the length of hair may pass out of the chamber, the secondary opening being located adjacent to the free end; and a movable abutment which can engage the length of hair in use, the movable abutment having an open position in which the length of hair can pass through the secondary opening, and a closed position in which the length of hair is retained within the chamber, wherein the movable abutment is located within one of (i) the secondary opening, (ii) the primary opening, and (iii) a passageway connecting the secondary opening to the primary opening. 2. A hair styling device according to claim 1, wherein the secondary opening is annular and surrounds the free end of the elongate member. 3. A hair styling device according to claim 1, wherein the movable abutment is located within the out of the chamber. (Column 4, lines 23-35; Figures 6 and 7) The secondary opening is adjacent to the free end of the elongate member B (Figures 6 and 7) The rod 22 is a movable abutment which can engage the length of hair in use. (Column 4, lines 9-35, Figure 7) The rod/movable abutment 22 has an open position in which the length of hair can pass through the secondary opening, and a closed position (within notch 70) in which the length of hair is retained within the chamber. (Column 4, lines 9-35, Figures 6 and 7) The rod/moveable abutment 22 is located within the secondary opening. (Figures 6 and 7) The secondary opening is annular and surrounds the free end of the elongate member B. (Figure 7) The rod/moveable abutment 22 is located within the secondary opening. (Figure 7) 15

20 secondary opening. 4. A hair styling device according to claim 1, wherein the secondary opening is permanently connected to the primary opening. 5. A hair styling device according to claim 1, wherein the movable abutment is located within one of (i) the secondary opening and (ii) the primary opening, and wherein the secondary opening is connected to the primary opening by way of a passageway. 11. A hair styling device according to claim 1, wherein the movable abutment is maintained in its closed position while the rotatable element is rotating. The secondary opening is permanently connected to the primary opening 54. (Figure 6) The rod/moveable abutment 22 is located within the secondary opening, and the secondary opening is connected to the primary opening 54 by way of a passageway. (Figures 6 and 7) The rod/moveable abutment 22 is in the closed position (secured with notch 70) while the rotatable element C is rotated. (Col. 3, lines 62 Col. 4, line 23, Figures 6 and 7) Ground 2: Claims 1-5 and 11 are invalid under 35 U.S.C. 102(b) over Japanese Publication No. JU-A S to Hoshino ( Hoshino ). Claims 1-5 and 11 are unpatentable under 35 U.S.C. 102(b) over Japanese Publication No. JU-A S to Hoshino ( Hoshino ) (Ex. 1005) (Prehodka Ex. 1002, 31a-31t). In the alternative, claims 1-5 and 11 are unpatentable under 35 U.S.C. 103 over Hoshino. Hoshino was published on January 21, 1986 and is therefore prior art under 35 U.S.C. 102(b). Hoshino was not considered by the USPTO during prosecution of the 118 Patent. 16

21 Citations to Hoshino herein refer to the certified English translation (Ex. 1006). Hoshino was cited in a Notice of Reasons for Rejection from the Japanese Patent Office on November 4, 2014 during prosecution of Japanese Patent Application No. JP , which claims priority to International Application No. PCT/GB2008/004146, which was published as WO2009/ (Certification of Kazuko Ishiwatari, Ex. 1007) Hoshino describes a hair styling device used for automatically winding hair on a removable curling member 9 exactly as specified in claims 1-5 and 11 of the 118 Patent. Hoshino is described with regard to the following annotated figures, which truly and correctly show the Hoshino device and how it operates. As shown in Hoshino Figure 1, the device has a protective tube body 6 and a rotating shaft 3 driven by a motor. The protective tube body 6 includes a hair introduction groove 22, a latching groove 23, and a lock lever 25, where the lock lever 25 also contains a lock groove 24. (Hoshino Figure 1) As shown in Hoshino Figure 2, the curling member 9 is formed by coupling 17

22 two elements, a fixed roller 7 (colorized in blue) and a rotating pressing piece 8 (colorized in yellow). The fixed roller 7 contains a hair guide arm 16 and a shaft hole 13. In use, the curling member 9 is inserted onto the rotating shaft 3 in the protective tube body 6. (Hoshino Figure 3) After the curling member 9 is in the protective tube body 6, the hair guide arm 16 is moved clockwise and placed in the latching groove 23 of the protective tube body 6 and the lock groove 24 of the lock lever 25. In this position, the hair guide arm 16 restrains the assembled curling member 9 inside the device during operation. (Hoshino Figure 4) 18

23 Next, a lock of hair is inserted through the hair introduction groove 22. The device s motor is activated, and the rotating pressing piece 8 rotates, causing insertion of the user s hair into a space that is created between the fixed roller 7 and the rotating pressing piece 8, thus winding the hair around the stationary fixed roller 7 as shown in Hoshino Figure 5. After the hair is wound around the fixed roller 7 of the curling member 9, the hair guide arm 16 is released from the latching groove 23, and the curling member 9, with the hair wrapped around fixed roller 7, is removed from the 19

24 protective tube body 6. (Hoshino Figure 5) The curling member 9 remains on the user s hair after exiting the protective tube body. The grounds for unpatentability are explained narratively below using the language of the 118 claims, annotated drawings from Hoshino, and the claim chart in Table 2. Claim 1 of the 118 Patent recites: A hair styling device Hoshino s device is a hair styling device. having: a body defining a chamber adapted to accommodate a length of hair, the chamber having a primary opening through which the length of hair may pass into the chamber; Hoshino has a body defining a chamber between the rotating pressing piece 8 and the protective tube body 6. The chamber is adapted to accommodate the length of hair. The hair introduction groove 22 is the primary opening of the chamber through which the length of hair may pass into the chamber. (Hoshino Figures 6 and 7). 20

25 A rotatable element adapted to engage the length of hair adjacent to the primary opening; Rotating pressing piece 8 is a rotatable element that is adapted to engage the length of hair adjacent to the primary opening 22. See Hoshino Figures 6 and 7. An elongate member around which, in use, the length of hair is wound by the rotatable element, the elongate member having a free end; Hoshino describes a fixed roller 7, which is an elongate member. Hair is wound around the elongate member 7 by the rotatable element 8. The elongate member 7 has a free end. See Hoshino Figures 5-7. the chamber having a secondary opening through which the length of hair may pass out of the chamber, the secondary opening being located adjacent to the free end [of the elongate member]; and As stated above, Hoshino has a chamber between the rotating pressing piece 8 and 21

26 the protective tube body 6. This chamber has a secondary opening through which the length of hair may pass out of the chamber. The secondary opening is adjacent to the free end of the elongate member 7. See Hoshino Figures 5-7. a movable abutment which can engage the length of hair in use, the movable abutment having an open position in which the length of hair can pass through the secondary opening, and a closed position in which the length of hair is retained within the chamber, wherein the movable abutment is located within one of (i) the secondary opening, (ii) the primary opening, and (iii) a passageway connecting the secondary opening to the primary opening. The hair guide arm 16 is a movable abutment that engages the length of hair being treated. The hair guide arm/moveable abutment 16 has an open position in which the hair can pass through the secondary opening as shown in Hoshino Figure 6. It also has a closed position in which the hair is retained within the chamber as shown in Hoshino Figure 7. The hair guide arm/moveable abutment 16 is located within the secondary opening. Not only does the device described in Hoshino meet all limitations of independent claim 1, it also meets the limitations of dependent claims 2-5 and 11. Claim 2 calls for A hair styling device according to claim 1, wherein the 22

27 secondary opening is annular and surrounds the free end of the elongate member. The secondary opening in Hoshino is annular and surrounds the free end of the elongate member 7. See Hoshino Figures 6 and 7. Claim 3 calls for A hair styling device according to claim 1, wherein the movable abutment is located within the secondary opening. Hoshino describes the hair guide arm/movable abutment 16 located within the secondary opening. See Hoshino Figures 6 and 7. Claim 4 calls for A hair styling device according to claim 1, wherein the secondary opening is permanently connected to the primary opening. The secondary opening is permanently connected to the primary opening 22. See Hoshino Figures 6 and 7. Claim 5 calls for A hair styling device according to claim 1, wherein the movable abutment is located within one of (i) the secondary opening and (ii) the primary opening, and wherein the secondary opening is connected to the primary opening by way of a passageway. The movable abutment 16 is located within the secondary opening, and the secondary opening is connected to the primary opening 22 by way of a passageway. See Hoshino Figures 6 and 7. Claim 11 of the 118 Patent recites A hair styling device according to claim 1, wherein the movable abutment is maintained in its closed position while the 23

28 rotatable element is rotating. The hair guide arm/movable abutment 16 is maintained in its closed position while the rotatable element 8 is rotating. See Hoshino Figure 7. As set forth above, the 118 Patent claims 1-5 and 11 are expressly disclosed by the Hoshino publication, since a person of ordinary skill in the art would conclude that each and every limitation of the invention as claimed in these claims is found in this prior art reference. For these reasons, claims 1-5 and 11 of the 118 Patent are invalid as anticipated under 35 U.S.C. Section 102(b). To the extent that there may be any differences between the subject matter of claims 1-5 and 11, any such differences are trivial and it would have been obvious under 35 U.S.C. 103 for one of ordinary skill in the art to modify Hoshino to arrive at claims 1-5 and 11 of the 118 Patent. The following claim chart shows the invalidity of claims 1-5 and 11. TABLE 2 Claims of the 118 Patent 1. A hair styling device having: a body defining a chamber adapted to accommodate a length of hair, the chamber having a primary opening through which the length of hair may pass into the The Limitations of the 118 Patent are Disclosed in the Prior Art Japanese Publication to Hoshino (JPS )(References are to the English translation Ex. 1006) Protective tube body 6 and rotating pressing piece 8 form a chamber that is adapted to accommodate a length of hair (Page 4, [2, 6]; Figures 1 and 2). Hair introduction groove 22 is the primary opening of the chamber through 24

29 chamber; a rotatable element adapted to engage the length of hair adjacent to the primary opening; an elongate member around which, in use, the length of hair is wound by the rotatable element, the elongate member having a free end; the chamber having a secondary opening through which the length of hair may pass out of the chamber, the secondary opening being located adjacent to the free end; and a movable abutment which can engage the length of hair in use, the movable abutment having an open position in which the length of hair can pass through the secondary opening, and a closed position in which the length of hair is retained within the chamber, which the length of hair may pass into the chamber (Page 4, [2, 6]; Figures 1 and 2). Rotating pressing piece 8 is a rotatable element that is adapted to engage the length of hair adjacent to the primary opening 22 (Page 4, [6]; Figures 1-3). Fixed roller 7 is an elongate member that hair is wound around by the rotatable element 8 (Page 4, [6]; Figures 1-3). The elongate member 7 has a free end (Figures 1-3). The chamber has a secondary opening through which the length of hair may pass out of the chamber (Figures 1 and 2). The secondary opening is adjacent to the free end of the elongate member 7 (Figures 1 and 2). The hair guide arm 16 is a movable abutment which can engage the length of hair in use (Page 4, [5], Page 5, [1]; Figures 1-3). The movable abutment 16 has an open position in which the length of hair can pass through the secondary opening, and a closed position (within notches 23 and 24) in which the length of hair is retained within the chamber (Page 4, [5], Page 5, [1]; Figures 1 and 2). 25

30 wherein the movable abutment is located within one of (i) the secondary opening, (ii) the primary opening, and (iii) a passageway connecting the secondary opening to the primary opening. 2. A hair styling device according to claim 1, wherein the secondary opening is annular and surrounds the free end of the elongate member. 3. A hair styling device according to claim 1, wherein the movable abutment is located within the secondary opening. 4. A hair styling device according to claim 1, wherein the secondary opening is permanently connected to the primary opening. 5. A hair styling device according to claim 1, wherein the movable abutment is located within one of (i) the secondary opening and (ii) the primary opening, and wherein the secondary opening is connected to the primary opening by way of a passageway. 11. A hair styling device according to claim 1, wherein the movable abutment is maintained in its closed position while the rotatable element is rotating. The moveable abutment 16 is located within the secondary opening (Figures 1 and 2). The secondary opening is annular and surrounds the free end of the elongate member 7 (Figures 1 and 2). The moveable abutment 16 is located within the secondary opening (Figures 1 and 2). The secondary opening is permanently connected to the primary opening 22 (Figures 1 and 2). The moveable abutment 16 is located within the secondary opening, and the secondary opening is connected to the primary opening 22 by way of a passageway (Figures 1 and 2). The moveable abutment 16 is in the closed position (secured within notches 23 and 24) while the rotatable element 8 is rotated (Page 4, [5]; Figure 1). 26

31 Ground 3: Claims 1 and 3-5 are invalid under 35 U.S.C. 102(b) over U.S. Patent Publication US2010/ to Hottenrott ( Hottenrott ). Claims 1 and 3-5 are unpatentable under 35 U.S.C. 102(b) over U.S. Patent Publication US2010/ to Hottenrott ( Hottenrott ) (Ex. 1009) (Prehodka Ex. 1002, 32a-32p). In the alternative, claims 1 and 3-5 are unpatentable under 35 U.S.C. 103 over Hottenrott. Hottenrott was published on April 8, 2010, and is therefore prior art under 35 U.S.C. 102(b). Hottenrott was not considered by the USPTO. The following annotated figures truly and correctly show the Hottenrott product and how it is used. Hottenrott Figures 1 and 2 are perspective views and Figures 3-5 are transverse sectional views of the Hottenrott device. Hottenrott describes a device used for hair styling exactly as specified in claims 1 and 3-5 of the 118 Patent. Hottenrott s device contains two styling parts 10, 20 that are pivotable towards each other from an open position to a closed position. (Hottenrott Figures 1-2). 27

32 The outside surfaces of styling parts 10, 20 are surrounded in some areas by two guide shells 12, 22. The guide shells 12, 22 are rotatable along the outside curvature of the styling parts 10, 20. Hottenrott Figures 1-5(a), (b), (c), and (d) sequentially show the use of the Hottenrott device. In use, the device is placed close to a user s head and a strand of user s hair 3 is placed between the two styling parts 10, 20 in the open position. (Hottenrott Figure 1). The styling parts 10, 20 are then pivoted towards each other into the closed position, creating a chamber therebetween. (Hottenrott Figures 2 and 3). Once the styling parts 10, 20 are in the closed position, the guide shells 12, 22 are rotated along the outside of the styling parts 10, 20, with the hair 3 in between the styling parts 10, 20 and the guide shells 12, 22. (Hottenrott Figures 3 and 4). The Hottenrott device is then moved away from the user s head, as shown in Hottenrott Figure 5A. This movement causes the strand of hair 3 to be first pulled 28

33 between the styling part 20 and the guide shell 12, then pulled between the styling parts 10, 20, and finally pulled between the styling part 10 and the guide shell 22 where it is cooled on a cooling surface 18 before exiting the device as shown in Hottenrott Figures 5B and 5C. Hottenrott Figure 5D shows the hair after styling. 29

34 The grounds for invalidity are explained narratively below using the language of the 118 claims, annotated drawings based on the Hottenrott drawings, and the claim chart in Table 3. Claim 1 of the 118 Patent recites: A hair styling device Hottenrott describes a hair styling device. having: a body defining a chamber adapted to accommodate a length of hair, the chamber having a primary opening through which the length of hair may pass into the chamber; As shown in Hottenrott Figure 6, the inside surfaces of the two styling parts 10, 20 form a body defining a chamber between the two styling parts 10, 20. The chamber is adapted to accommodate a length of hair 3. The chamber has a primary opening through which the length of hair passes into the chamber. See Hottenrott Figure 6. a rotatable element adapted to engage the length of hair adjacent to the primary opening; 30

35 As shown in Hottenrott Figure 7, Hottenrott s guide shells 12, 22 rotate and thus are a rotatable element. In the closed position, the guide shells/rotatable element 12, 22 are adapted to engage the length of hair 3 adjacent to the primary opening. an elongate member around which, in use, the length of hair is wound by the rotatable element, the elongate member having a free end [of the elongate member]; The two styling parts 10, 20 form an elongate member. As shown by Hottenrott Figures 4 and 7, when the device is in the closed position, the hair 3 is wound around the elongate member 10, 20 by the rotatable element 12, 22. As shown in Hottenrott Figure 8, Hottenrott s elongate member 10, 20 has a free end. 31

36 the chamber having a secondary opening through which the length of hair may pass out of the chamber, the secondary opening being located adjacent to the free end; and The two guide shells 12, 22 form a movable abutment. The guide shells/movable abutment 12, 22 engage the length of hair in use as shown in Hottenrott Figures 4 and 7. The guide shells/moveable abutment 12, 22 have an open position in which the hair can pass through the secondary opening, and a closed position in which the length of hair is retained within the chamber, as shown in Hottenrott Figures 6 and 7. The guide shells/moveable abutment 12, 22 is located within the primary opening and the secondary opening as shown in Hottenrott Figures 6 and 7. a movable abutment which can engage the length of hair in use, the movable abutment having an open position in which the length of hair can pass through the secondary opening, and a closed position in which the length of hair is retained within the chamber, wherein the movable abutment is located within one of (i) the secondary opening, (ii) the primary opening, and (iii) a passageway connecting the secondary opening to the primary opening. The two guide shells 12, 22 form a movable abutment. The guide shells/movable abutment 12, 22 engage the length of hair in use as shown in Hottenrott Figures 4 32

37 and 7. The guide shells/moveable abutment 12, 22 have an open position in which the length of hair can pass through the secondary opening, and a closed position in which the length of hair is retained within the chamber, as shown in Hottenrott Figures 6 and 7. The guide shells/moveable abutment 12, 22 is located within the primary opening and the secondary opening as shown in Hottenrott Figures 6 and 7. Not only does the device described in Hottenrott meet all the limitations of independent claim 1, it also meets the limitations of dependent claims 3-5. Claim 3 calls for A hair styling device according to claim 1, wherein the movable abutment is located within the secondary opening. The guide shells/movable abutment 12, 22 of Hottenrott are located within the secondary opening. See Hottenrott Figure 7. Claim 4 calls for A hair styling device according to claim 1, wherein the secondary opening is permanently connected to the primary opening. Hottenrott s secondary opening is permanently connected to the primary opening. See Hottenrott Figure 7. Claim 5 calls for A hair styling device according to claim 1, wherein the movable abutment is located within one of (i) the secondary opening and (ii) the primary opening, and wherein the secondary opening is connected to the primary 33

38 opening by way of a passageway. The guide shells/movable abutment 12, 22 are located within the secondary opening, and the secondary opening is connected to the primary opening by way of a passageway. See Hottenrott Figure 7. As set forth above, the Hottenrott application discloses claims 1 and 3-5 of the 118 Patent since a person of ordinary skill in the art would conclude that each and every limitation of the invention as claimed in these patent claims is found in this prior art reference. For these reasons, claims 1 and 3-5 of the 118 Patent are invalid as anticipated under 35 U.S.C. Section 102(b). To the extent that there may be any differences between the subject matter of claims 1 and 3-5, any such differences are trivial and it would have been obvious under 35 U.S.C. 103 for one of ordinary skill in the art to modify Hottenrott to arrive at claims 1 and 3-5 of the 118 Patent. The following claim chart shows the invalidity of claims 1 and 3-5. TABLE 3 Claims of the 118 Patent 1. A hair styling device having: a body defining a chamber adapted to accommodate a length of hair, The Limitations of the 118 Patent are Disclosed in the Prior Art Application Hottenrott (Pat. Publication No. US ) The inside surfaces of the two styling parts 10, 20 described in Hottenrott form a body defining a chamber that is adapted to accommodate a length of hair 3. [0070], (Figures 1-3) 34

39 the chamber having a primary opening through which the length of hair may pass into the chamber; a rotatable element adapted to engage the length of hair adjacent to the primary opening; an elongate member around which, in use, the length of hair is wound by the rotatable element, the elongate member having a free end; the chamber having a secondary opening through which the length of hair may pass out of the chamber, the secondary opening being located adjacent to the free end; and a movable abutment which can engage the length of hair in use, the movable abutment having an open position in which the length of hair can pass through the secondary opening, and a closed The chamber has a primary opening through which the length of hair may pass into the chamber [0070], (Figures 1b and 2b) The two guide means 12, 22 are a rotatable element that is adapted to engage the length of hair adjacent to the primary opening [0073], (Figures 2b and 3b) The two styling parts 10, 20 form an elongate member when in the closed position. Hair is wound around the elongate member 10, 20 by the rotatable element 12, 22 [0073], (Figures 2b, 3b) Elongate member 10, 20 has a free end (Figure 2). The chamber formed by the inside surfaces of the two styling parts 10, 20 has a secondary opening through which the length of hair may pass out of the chamber. [0073] (Figures 1b and 2b). The secondary opening is adjacent to the free end of the elongate member 10, 20 (Figures 2a). The guide parts 12, 22 are a movable abutment and engage the length of hair in use [0073], (Figures 2b, 3b) The movable abutment 12, 22 has an open position in which the length of hair can pass through the secondary opening, and a closed position in which the length 35

40 position in which the length of hair is retained within the chamber, wherein the movable abutment is located within one of (i) the secondary opening, (ii) the primary opening, and (iii) a passageway connecting the secondary opening to the primary opening. 3. A hair styling device according to claim 1, wherein the movable abutment is located within the secondary opening. 4. A hair styling device according to claim 1, wherein the secondary opening is permanently connected to the primary opening. 5. A hair styling device according to claim 1, wherein the movable abutment is located within one of (i) the secondary opening and (ii) the primary opening, and wherein the secondary opening is connected to the primary opening by way of a passageway. of hair is retained within the chamber (Figures 2-3). The moveable abutment 12, 22 is located in the primary opening, the secondary opening, and the passageway connecting the secondary opening to the primary opening (Figures 2-3). The movable abutment 12, 22 is located within the secondary opening (Figures 2-3). The secondary opening is permanently connected to the primary opening (Figures 1b and 2b). The movable abutment 12, 22 is located within the primary opening, the secondary opening, and the secondary opening is connected to the primary opening by a passageway (Figures 2-3). Ground 4: Claims 1-5 and 11 are invalid under 35 U.S.C. 102(b) over United Kingdom Patent Specification No. 1,036,583 to Gillette ( Gillette ) Claims 1-5 and 11 are unpatentable under 35 U.S.C. 102(b) over United Kingdom Patent Specification No. 1,036,583 to Gillette ( Gillette ) (Ex. 1010) 36

41 (Prehodka Ex. 1002, 33a-33t). In the alternative, claims 1-5 and 11 are unpatentable under 35 U.S.C. 103 over the same reference. Gillette was published on April 8, 2010, before the priority date of the 118 Patent, and is therefore prior art under 35 U.S.C. 102(b). Gillette was not considered by the PTO during prosecution of the 118 Patent 1. With reference to the embodiment of Figure 6 of the Gillette document, Gillette discloses a device used for hair styling exactly as specified in claims 1-5 and 11 of the 118 Patent. Gillette is described below with regard to the following annotated figures, which truly and correctly show the Gillette device embodiment of Figure 6 and how it operates. Gillette Figures 1 is an expanded perspective view, Figures 3-6 and 8 are perspective views, Figures 2 and 9 are sectional views, and Figure 7 is a partially broken away side perspective view. Gillette describes a hair curling device for coiling a hair tress. Gillette s assembled device includes a turbine stator 36 (colorized as orange), a surrounding guide member including a housing 32 with a rotatable shaft 50 (colorized as green), and an air receiver 34 (colorized as yellow). (Gillette Figures 1 and 2). A slot 38 in the air receiver 34 provides access for hair into the chamber. The shaft 50 1 A related reference, Mizelle (U.S. Patent number 3,213,860) was considered during prosecution of the 118 Patent. It is listed on the face of the 118 Patent as Tewksbury et. al. The Examiner failed to appreciate how Mizell functions. 37

42 has an end closure 55. A tress winding member 40 (colorized in blue) includes a slot 43 for passage of hair into the tress winding member 40. The air receiver 34 has an open end providing an annular opening adjacent to the end closure 55. The tress winding member 40, which serves as a hair curler, can be inserted into the air receiver 34 adjacent to the slot 38. (Gillette Figures 1 and 2) The winding member 40 has a closure 46 with an outwardly extending rim 47. During a hair winding operation the closure 46 closes the open end of the air receiver 34. In use, the tress winding member 40 is inserted through the annular opening at the free end of the air receiver 34. Before the tress winding member 40 is inserted into the air receiver 34, the closure 46 is in an open position. When 38

43 inserted into the air receiver 34, the closure 46 on the tress winding member 40 closes the annular opening. (Gillette Figures 2 and 3) Once the tress winding member 40 is in place, a user places a strand of hair in aligned slots 38 and 43 for coiling the hair. Slot 38 is the slot in the air receiver and slot 43 is the slot in the tress winding member 40. (Gillette Figures 3 and 4) Next, the shaft 50 rotates to wind the length of hair through aligned slots 38 and 43 into coils into the inside of the tress winding member 40. (Gillette Figure 5) After the length of hair is wound inside tress winding member 40, the tress winding member 40 with hair coiled therein is removed through the annular opening. (Gillette Figure 6) 39

44 The grounds for unpatentability are explained narratively below using the language of the 118 Patent claims and annotated drawings, based on the Gillette drawings, as well as the claim chart in Table 4. Claim 1 of the 118 Patent recites: A hair styling device The Gillette device is for coiling a hair tress and thus is a hair styling device. having: a body defining a chamber adapted to accommodate a length of hair, the chamber having a 40

45 primary opening through which the length of hair may pass into the chamber; The air receiver 34 defines a chamber adapted to accommodate a length of hair. The slot 38 in the air receiver 34 is the primary opening through which a length of hair can pass into the chamber. (Gillette Figure 7) a rotatable element adapted to engage the length of hair adjacent to the primary opening; The shaft 50 is a rotatable element adapted to engage the length of hair adjacent to the primary opening 38. (Gillette Figures 7 and 8) 41

46 an elongate member around which, in use, the length of hair is wound by the rotatable element, the elongate member having a free end; The shaft 50 is also an elongate member around which, in use, the length of hair is wound. (Gillette Figure 7) The shaft/elongate member 50 has a free end. (Gillette Figure 8) the chamber having a secondary opening through which the length of hair may pass out of the chamber, the secondary opening being located adjacent to the free end [of the elongate member]; and The opening at the end of the air receiver 34 is a secondary opening through which the length of hair may pass out of the chamber provided by the air receiver 34. The secondary opening is located adjacent to the free end of the shaft/elongate member 50. (Gillette Figure 8) a movable abutment which can engage the length of hair in use, the movable abutment having an open position in which the length of hair can pass through the secondary opening, and a closed position in which the length of hair is retained within the chamber, wherein the movable abutment is located within one of (i) the secondary opening, (ii) the primary opening, and (iii) a passageway 42

47 connecting the secondary opening to the primary opening. The closure 46 of the tress winding member 40 is a movable abutment. As shown by Gillette Figure 8, when the tress winding member 40 is not within the air receiver 34, the closure/movable abutment 46 has an open position in which a length of hair can pass through the secondary opening. As shown by Gillette Figures 7 and 9, when the tress winding member 40 is within the air receiver 34, the closure/movable abutment 46 is in a closed position in which it engages the hair in use. Furthermore, the length of hair is retained within the chamber in the closed position. The closure/movable abutment 46 is located within the annular secondary opening at the end of the air receiver 34. Not only does the device described in Gillette meet all limitations of independent claim 1, it also meets the limitations of dependent claims 2-5 and 11. Claim 2 states A hair styling device according to claim 1, wherein the secondary opening is annular and surrounds the free end of the elongate member. 43

48 As shown by Gillette Figure 8, the opening at the end of the air receiver 34 in Gillette is adjacent to the shaft/elongate member 50 and is annular. Claim 3 states A hair styling device according to claim 1, wherein the movable abutment is located within the secondary opening. As shown in Gillette Figure 5, Gillette s closure/movable abutment 46 is located within the annular secondary opening at the end of the air receiver 34. Claim 4 states A hair styling device according to claim 1, wherein the secondary opening is permanently connected to the primary opening. As shown by Gillette Figure 8, the secondary opening at the end of the air receiver 34 in Gillette is permanently connected to the primary opening 38. Claim 5 states A hair styling device according to claim 1, wherein the movable abutment is located within one of (i) the secondary opening and (ii) the primary opening, and wherein the secondary opening is connected to the primary opening by way of a passageway. As shown by Gillette Figures 7 and 8, Gillette s closure/movable abutment 46 is located within the annular opening, the secondary opening at the end of the air receiver 34. There is a passageway between the primary opening 38 and the secondary opening. Claim 11 calls for A hair styling device according to claim 1, wherein the movable abutment is maintained in its closed position while the rotatable element 44

49 is rotating. As shown in Gillette Figure 7, the closure/moveable abutment 46 is maintained in its closed position while the shaft/rotatable element 50 is rotating. As set forth above, every limitation of claims 1-5 and 11 of the 118 Patent are set forth in the Gillette application since a person of ordinary skill in the art would conclude that each and every limitation of the invention as claimed in these patent claims is found in this prior art reference. For these reasons, claims 1-5 and 11 of the 118 Patent are invalid as anticipated under 35 U.S.C. 102(b). To the extent that there may be any differences between the subject matter of claims 1-5 and 11, any such differences are trivial and it would have been obvious under 35 U.S.C. 103 for one of ordinary skill in the art to modify Gillette to arrive at claims 1-5 and 11 of the 118 Patent. The following claim chart shows the invalidity of claims 1-5 and 11. TABLE 4 Claims of the 118 Patent 1. A hair styling device having: a body defining a chamber adapted to accommodate a length of hair, the chamber having a primary opening through which the length of hair may pass into the chamber; The Limitations of the 118 Patent are Disclosed in the Prior Art Patent to Gillette (GB ) The air receiver 34 is a body defining a chamber adapted to accommodate a length of hair (Figure 6). The slot 38 in the air receiver 34 is the primary opening of the chamber through which the length of hair may pass into the chamber. (Page 5, 45

50 lines 54-61, Figure 6). a rotatable element adapted to engage the length of hair adjacent to the primary opening; an elongate member around which, in use, the length of hair is wound by the rotatable element, the elongate member having a free end; the chamber having a secondary opening through which the length of hair may pass out of the chamber, the secondary opening being located adjacent to the free end; and a movable abutment which can engage the length of hair in use, the movable abutment having an open position in which the length of hair can pass through the secondary opening, and a closed position in The shaft 50 is a rotatable element that is adapted to engage the length of hair adjacent to the primary opening 38 (Page 5, lines 75-95, Figure 9). The shaft 50 is an elongate member, that hair is wound around by the rotatable element 50 (Page 5, lines 80-90, Figure 9). The elongate member 50 has a free end (Page 5, lines 75-95, Figure 9). The opening at the end of air receiver 34 is the secondary opening of the chamber through which the length of hair may pass out of the chamber (Page 5, lines , Figures 6 and 9). The secondary opening is adjacent to the free end of the elongate member 50 (Page 5, lines , Figures 6 and 9). The closure 46 of the tress winding member 40 is a movable abutment that can engage the length of hair in use (Page 5, lines 5-23, Figures 6 and 9). When the tress winding member 40 is not within the air receiver 34, the movable abutment 46 has an open position in which a length of hair 46

51 which the length of hair is retained within the chamber, wherein the movable abutment is located within one of (i) the secondary opening, (ii) the primary opening, and (iii) a passageway connecting the secondary opening to the primary opening. 2. A hair styling device according to claim 1, wherein the secondary opening is annular and surrounds the free end of the elongate member. 3. A hair styling device according to claim 1, wherein the movable abutment is located within the secondary opening. 4. A hair styling device according to claim 1, wherein the secondary opening is permanently connected to the primary opening. 5. A hair styling device according to claim 1, wherein the movable abutment is can pass through the secondary opening. Also, when the tress winding member 40 is removed from the air receiver 34, the movable abutment 46 has an open position in which a length of hair can pass through the secondary opening. When the tress winding member 40 is within the air receiver 34, the movable abutment 46 has a closed position in which the length of hair is retained within the chamber (Page 5, lines 5-23, Figures 6 and 9). The moveable abutment 46 is located within the secondary opening at the end of air receiver 34 (Page 5, lines 5-23, Figures 6 and 9). The secondary opening at the end of air receiver 34 is annular and surrounds the free end of the elongate member 50 (Figures 6, 9 and 11b). The moveable abutment 46 is located within the secondary opening at the end of air receiver 34 (Figures 6 and 9). The secondary opening at the end of air receiver 34 is permanently connected to the primary opening 38 (Figures 6 and 9). The moveable abutment 46 is located within the secondary 47

52 located within one of (i) the secondary opening and (ii) the primary opening, and wherein the secondary opening is connected to the primary opening by way of a passageway. 11. A hair styling device according to claim 1, wherein the movable abutment is maintained in its closed position while the rotatable element is rotating. opening at the end of air receiver 34, and the secondary opening is connected to the primary opening 38 by way of a passageway (Figures 6 and 9). The moveable abutment 46 is maintained in its closed position while the rotatable element 50 is rotating (Page 5, lines 5-23, Figure 6). Ground 5: Claims 1, 3-5 and 11 are invalid under 35 U.S.C. 102(b) over International Patent Publication WO2009/ to De Benedictis ( De Benedictis 2009 ). As explained by Prehodka (Prehodka Ex a-35o), claims 1, 3-5 and 11 are unpatentable under 35 U.S.C. 102(b) over published Patent Cooperation Treaty (PCT) Publication WO2009/ to De Benedictis ( De Benedictis 2009 ) (Ex. 1011) or in the alternative, claims 1, 3-5 and 11 are unpatentable under 35 U.S.C. 103 over the same reference. De Benedictis 2009 was published on June 25, 2009 and is therefore prior art under 35 U.S.C. 102(b). Figures in De Benedictis 2009 herein refer to the annotated figures. De Benedictis 2009 was referenced in the specification of the 118 Patent. De Benedictis 2009 was mischaracterized in the specification of the application for the 118 Patent, incorrectly stating that the invention that is the subject of the 118 Patent differed from De Benedictis 2009 in having a secondary 48

53 opening adjacent to a free end of the elongate member which permits the length of hair to be removed from the chamber without passing back through the primary opening. 118 Patent, Ex. 1001, Col. 2, lines 4-7. Prehodka Ex De Benedictis 2009 was not applied by the USPTO during prosecution of the 118 Patent, probably because of the mischaracterization in the specification of the 118 Patent. Claim 2 is discussed below regarding obviousness. De Benedictis 2009 s device 401 has a handle 402, a substantially tubular housing 406 that contains an annular chamber 408, and an elongate member 436. There is a primary opening in the housing 406 that runs parallel to the elongate member 436, which can be closed by a door 490. The housing 406 contains a helical member 420. The housing 406 also has an aperture 480 in an end wall 412, which is distal to the handle 402. (De Benedictis Figure 1) 49

54 In use of the De Benedictis 2009 device 401, as shown in De Benedictis Figures 2A-2D, a length of a user s hair is placed into the opening of the housing 406 created when the door 490 is in the open position. When the length of the user s hair is placed in the opening, the door 490 is then shut, closing off the opening in the housing 406 and ensuring that the hair is retained in the chamber 408 during operation of the device. (De Benedictis Figure 2B) The length of hair is wrapped around the elongate member 436 by rotation of the helical member 420. (De Benedictis Figure 2C) After the length of hair is curled, the styled hair passes out of the aperture 480 of the end wall 412, resulting in a curl (Figure 5D). 50

55 The grounds for unpatentability are explained narratively below using the language of the 118 claims, the annotated drawings, and the claim chart in Table 5. Claim 1 of the patent recites: A hair styling device The De Benedictis device is for curling a length of hair and thus is a hair styling device. having: a body defining a chamber adapted to accommodate a length of hair, the chamber having a primary opening through which the length of hair may pass into the chamber; The housing 406 is a body defining an annular chamber 408 adapted to accommodate a length of hair. (De Benedictis Figure 3) The chamber 408 has a primary opening, namely a slot that is created when the door 490 is opened, through which the length of hair may pass into the chamber

56 a rotatable element adapted to engage the length of hair adjacent to the primary opening; De Benedictis 2009 discloses a helical rotating element 420 that is a rotatable element adapted to engage the length of hair adjacent to the primary opening. (De Benedictis Figure 3) an elongate member around which, in use, the length of hair is wound by the rotatable element, the elongate member having a free end; As shown by De Benedictis Figures 3 and 4, the elongate member 436 of De Benedictis 2009 has a free end. In use, the length of hair is wound by the rotatable element 420. the chamber having a secondary opening through which the length of hair may pass out of the chamber, the secondary opening being located adjacent to the free end [of the elongate member]; and 52

57 The aperture 480 in the end wall of the De Benedictis 2009 chamber 408 is the secondary opening through which the length of hair may pass out of the chamber 408. The aperture/secondary opening 480 is located adjacent to the free end of the elongate member 436. (De Benedictis Figures 3 and 4) a movable abutment which can engage the length of hair in use, the movable abutment having an open position in which the length of hair can pass through the secondary opening, and a closed position in which the length of hair is retained within the chamber, wherein the movable abutment is located within one of (i) the secondary opening, (ii) the primary opening, and (iii) a passageway connecting the secondary opening to the primary opening. The door 490 is a movable abutment that can, and does, engage the length of hair in use, as shown by De Benedictis Figures 3 and 4. The door/moveable abutment 490 has an open position, in which the length of hair can pass through the aperture/secondary opening 480, and a closed position in which the length of hair is retained within the chamber 408. (De Benedictis Figures 3 and 4) The door/movable abutment 490 is located along the entire length of the chamber 408 and thus, it is located within the primary opening, within the aperture/secondary opening 480, and also within the passageway connecting the aperture/secondary 53

58 opening 480 to the primary opening. (De Benedictis Figures 3 and 4) 11. De Benedictis also meets all of the limitations of dependent claims 3-5 and Claim 3 states A hair styling device according to claim 1, wherein the movable abutment is located within the secondary opening. As shown in De Benedictis Figures 3 and 4, De Benedictis 2009 shows the door/abutment 490 as being located within the aperture/secondary opening 480. Claim 4 states A hair styling device according to claim 1, wherein the secondary opening is permanently connected to the primary opening. The device described in De Benedictis 2009 has the secondary opening 480 permanently connected to the primary opening. (De Benedictis Figures 3 and 4) Claim 5 states A hair styling device according to claim 1, wherein the movable abutment is located within one of (i) the secondary opening and (ii) the primary opening, and wherein the secondary opening is connected to the primary opening by way of a passageway. De Benedictis 2009 shows the abutment/door 490 within the primary opening and the aperture/secondary opening 480, the aperture/secondary opening 480 being connected to the primary opening by way of a passageway. (De Benedictis Figures 3 and 4) Claim 11 calls for A hair styling device according to claim 1, wherein the 54

59 movable abutment is maintained in its closed position while the rotatable element is rotating. The door 490 in De Benedictis 2009 is maintained in its closed position while the rotatable element 420 is rotating. (De Benedictis Figure 4) As detailed above, the 118 patent claims 1, 3-5 and 11 are invalid as anticipated under 35 U.S.C. Section 102(b). To the extent there may be any differences between the subject matter of claims 1, 3-5 and 11, any such differences are trivial and it would have been obvious under 35 U.S.C. 103 for one of ordinary skill in the art to modify De Benedictis 2009 to arrive at claims 1, 3-5 and 11 of the 118 Patent. and 11. The following claim chart in Table 5 shows the invalidity of claims 1, 3-5 TABLE 5 Claims of the 118 Patent 1. A hair styling device having: a body defining a chamber adapted to accommodate a length of hair, the chamber having a primary opening through which the length of hair may pass into the chamber; The Limitations of the 118 Patent are Disclosed in the De Benedictis 2009 Application The housing 406 is a body defining an annular chamber 408 that is adapted to accommodate a length of hair (Page 17, lines 13-16; Figures 13 and 14). The chamber 408 has a primary opening, namely a slot that is created when a door 490 is opened, through which the length of hair may pass into the chamber 408 (Page 18, lines 55

60 15-17, Figures 13 and 14). a rotatable element adapted to engage the length of hair adjacent to the primary opening; an elongate member around which, in use, the length of hair is wound by the rotatable element, the elongate member having a free end; the chamber having a secondary opening through which the length of hair may pass out of the chamber, the secondary opening being located adjacent to the free end; and a movable abutment which can engage the length of hair in use, the movable abutment having an open position in which the length of hair can pass through the secondary opening, and a closed position in which the length of hair is retained The rotatable element 420 is adapted to engage the length of hair adjacent to the primary opening (Page 18, lines 21-24; Figures 13 and 14). The device has an elongate member 436 around which, in use, the length of hair is wound by the rotatable element 420 (Page 18, lines 20-24; Figures 13 and 14). The elongate member 436 has a free end (Figures 13 and 14). The chamber 408 has an aperture 480 in an end wall 412, which is the secondary opening through which the length of hair may pass out of the chamber 408 (Page 18, lines 28-31; Figures 13 and 14). The secondary opening 480 in is located adjacent to the free end of the elongate member 436 (Figures 13 and 14). The device has a movable abutment, or door 490, which can engage the length of hair in use (Page 18, lines 15-31; Figures 13 and 14). The movable abutment 490 has an open position, as shown in Figure 13, in which the length of hair can pass through the secondary opening 480 and a closed position in which the 56

61 within the chamber, wherein the movable abutment is located within one of (i) the secondary opening, (ii) the primary opening, and (iii) a passageway connecting the secondary opening to the primary opening. 3. A hair styling device according to claim 1, wherein the movable abutment is located within the secondary opening. 4. A hair styling device according to claim 1, wherein the secondary opening is permanently connected to the primary opening. 5. A hair styling device according to claim 1, wherein the movable abutment is located within one of (i) the secondary opening and (ii) the primary opening, and wherein the secondary opening is connected to the primary opening by way of a passageway. 11. A hair styling device according to claim 1, wherein the movable abutment is maintained in its closed position while the rotatable element is rotating. length of hair is retained within the chamber 408 (Page 18, lines 15-31; Figures 13 and 14). The movable abutment 490 is located within the passageway between the primary opening and the secondary opening 480 (Page 18, lines 15-31; Figures 13 and 14). The moveable abutment 490 is located within the secondary opening 480 (Page 17, lines 28-31, Figures 13 and 14). The secondary opening 480 is permanently connected to the primary opening (Page 17, lines 13-31, Figures 13 and 14). The movable abutment 490 is located within the primary opening and the secondary opening 480 is connected to the primary opening by way of a passageway (Page 17, lines 13-31, Figures 13 and 14). The movable abutment 490 is maintained in its closed position while the rotatable element 420 is rotating (Page 18, lines 19-31). 57

62 Ground 6: Claim 2 is unpatentable under 35 U.S.C. 103 over De Benedictis 2009 in view of United Kingdom Patent No. GB to Dinger ( Dinger ), Gnaga, Hoshino, or Gillette. Claim 2 is unpatentable under 35 U.S.C. 103 over published Patent Cooperation Treaty (PCT) Publication WO2009/ to De Benedictis ( De Benedictis ) (Ex. 1011) in view of United Kingdom Patent No. GB to Dinger ( Dinger ) (Ex. 1012), Gnaga (Ex. 1004), Hoshino (Ex. 1005), or Gillette (Ex. 1010), as set forth in the Prehodka Ex. 1002, 36a-36f. The only difference between claim 2 and claim 1 is that claim 2 requires the secondary opening to be annular and surrounds the free the end of the elongate member. Gnaga, Hoshino, and Gillette all disclose an annular secondary opening surrounding the free end of an elongate member. Also, Dinger describes a device used for hair styling. Dinger is described with regard to the following annotated figures. Dinger Figures 1 and 3 are sectional views, and Figures 2 and 4 are transverse sectional views of the Dinger device. The Dinger device has a substantially tubular sleeve 1 that creates a hollow 12 around a core 11. The sleeve 1 has a distal end that is annular and open, and a proximal end that is closed. The core 11 has a distal end that is a free end, and a proximal end that is enclosed within the sleeve 1. 58

63 Fig. 3 Dinger Figure 1 Fig. 2 Dinger Figure 2 In use, as shown in Dinger Figure 1, a length of hair is wrapped around the core 11 and the sleeve 1 is placed over the core 11. The length of hair is then heated for a period of time until the hair forms the desired curled shape. Afterwards, the hair is slid off the free end of the core 11, out the distal annular open end of the sleeve 1. Each of Gnaga, Hoshino, Gillette, and Dinger devices have an annular opening around an end of an elongated member. It was well known in the art, at least as early as 1927 as demonstrated by Dinger, that a known and conventional way to remove curled hair from an elongate member is to slide it off the free end of the elongate member through an annular opening. This has the obvious advantage that a formed curl does not need to be unwound to remove it from the elongate member, which allows the curl to retain its shape. Therefore, it would have been obvious to a person of ordinary skill in the art 59