DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-10 in the reply filed on 3/2/2026 is acknowledged.
No claims are withdrawn because applicant cancelled claims 11-19.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9 recites the limitation "the width of the main body part" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the user’ lips" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3, 4, 6, 9 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koehler (2012/0181348).
Regarding claim 1, Koehler A drinking straw device, comprising a tubular body (21) defining an elongated central opening therethrough (21 is a drinking straw so it has to have an opening) and having a main body part defining a distal end (10) and a widened proximal part defining a widened proximate end (20), wherein the main body part has a circular cross section (fig 1A), and the proximal part has a flat oval cross section (fig 3, 33), and wherein the proximal part has a pre-determined length extending from the proximate end toward the main body part (fig 2), and wherein the proximal part has a uniform cross-section along its length (fig 2).
Regarding claim 3, wherein the proximal part is formed by a pair of opposing flat walls joined by arcuate wall segments (33 is the cross section of 2 that shows a pair of opposing flat walls joined by arcuate wall segments).
Regarding claim 4, wherein a distance between the flat walls defines height of the proximate part, and wherein said height is smaller than diameter of the central opening in the main body part (shape 33 is defined in the specification as a thin slit [0024], meaning it is thinner than the cross-section shown as shape 31. Cross-section 31 is the same height as 10, so cross-section 33 must be thinner than that of 10).
Regarding claim 6, wherein the tubular body has a connecting part unitary connected to and positioned between the main body part and the proximal part, the connecting part comprising outwardly extending sidewalls (fig 2, the connecting part is the part were the straw widens).
Regarding claim 9, wherein the proximal part has a pre-determined width, which is greater than the width of the main body part (fig 2).
Regarding claim 10, wherein the proximal part is configured to define a widened outlet periphery which allows a user to form a seal around the periphery, when drinking a liquid, without puckering the user's lips (fig 2, [0020]).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 2 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koehler (2012/0181348).
Regarding claim 2, Koehler shows all aspects of the applicant’s invention as in claim 1, but fails to disclose wherein the length of the proximal part is between 5% and 25% of the total length of the tubular body.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Koehler to so that the length of the proximal part is between 5% and 25% of the total length of the tubular body, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC., Inc., 725 F.2d 1338, 220 USPQ 77 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984).
In this case, the device of Koehler would not operate differently with the length of the proximal part being between 5% and 25% of the total length of the tubular body, since the straw of Koehler and the claimed straw are identical in every other way and changing the proportion of the proximal end will not affect the function of the straw. Further, it appears that applicant places no criticality in the claimed range.
Regarding claim 5, Koehler shows all aspects of the applicant’s invention as in claim 4, but fails to teach wherein the height of the proximal part is between 30% and 60% of the diameter of the central opening of the main body part.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Koehler to so that the height of the proximal part is between 30% and 60% of the diameter of the central opening of the main body part, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC., Inc., 725 F.2d 1338, 220 USPQ 77 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984).
In this case, the device of Koehler would not operate differently with the height of the proximal part being between 30% and 60% of the diameter of the central opening of the main body part, since the straw of Koehler and the claimed straw are identical in every other way and changing the proportion of the proximal end will not affect the function of the straw. Further, it appears that applicant places no criticality in the claimed range.
Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koehler (2012/0181348) in view of Diorio et al. (2017/0079453).
Regarding claim 7, Koehler shows all aspects of the applicant’s invention as in claim 6, but fails to disclose wherein the tubular body comprises a bent part unitary connected to and positioned downstream of the proximal part.
However, Diorio et al. teaches a straw with a bent portion (fig 6).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the application was effectively field to add a bent portion to the straw of Koehler. in order to allow the user to drink from the straw without having to tilt their head or the beverage as taught by Diorio et al [0032].
Regarding claim 8, the examiner notes that the above combination does not explicitly teach wherein said bent part is positioned downstream of the connecting part.
However, from looking at figure 6 of Diorio et al. and figure 2 of Koehler, it would have been obvious to one of ordinary skill in the art at the time the application was effectively field to locate the bent portion downstream of the connecting part, since it is the easiest place to locate the bent portion without effecting the shape of the proximal portion.
Additionally in Diorio et al. the bent portion appears to be located downstream of the portion where the users mothy touches the straw, which would be downstream of the connecting part.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 and 7-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 and 18 of copending Application No. 17411890 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Current claim: Rejected by at least claims of 17411890:
1 10, 18
2 10
3 10, 18
4 10, 18
7 10,18
8 10, 18
9 10, 18
10 10, 18
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON J BOECKMANN whose telephone number is (571)272-2708. The examiner can normally be reached M-F 9am to 5pm.
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/JASON J BOECKMANN/Primary Examiner, Art Unit 3752 3/11/2026