DETAILED ACTION
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 14 May 2026 has been entered.
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 1 and 5-16 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 1, lines 10 – 11 recite “(ii) the at least one volatile aromatic product.” This is part of the second option of the Markush group of “(i)” and “(ii)” but “the at least one volatile aromatic product” draws antecedent basis from option “(i)” so it’s not clear as to how the claim can allow for only having one of the two configurations.
Claim 10, lines 12 – 15 recite “(ii) the at least one volatile aromatic product.” This is part of the second option of the Markush group of “(i)” and “(ii)” but “the at least one volatile aromatic product” draws antecedent basis from option “(i)” so it’s not clear as to how the claim can allow for only having one of the two configurations.
Claims 5 – 9 and 11 – 16 are rejected by virtue of their dependence on a rejected base claim.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating
obviousness or nonobviousness.
Claims 1, 5, 7, 9, and 11 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Virgalitto et al. US 2005/0089548 in view of Nehaili GB 2 198 622.
Regarding claims 1 and 11, Virgalitto discloses a straw capable of being used to consume a liquid or semi-liquid edible product from a package in which package the liquid or semi-liquid edible product is contained. The straw has a coating (inner surface of a straw) (paragraph [0080]) which coating comprises at least one volatile aromatic product that is that is microencapsulated in the coating (paragraph [0012]) and capable of releasing the at least one volatile aromatic product into air that is mixed with the liquid or demi-liquid edible product at a time the liquid or semi-liquid product when the liquid or semi-liquid edible product is sipped through the hollow elongated channel and the at least one volatile aromatic product is stored within a capsule which is coated or similarly attached to a surface of the straw (paragraph [0012] and [0080]). Since the at least one volatile aromatic product would be released when the straw is used for said straws intended purpose, that is consumption of a beverage, it is obvious that the capsule would be capable of melting at a predetermined temperature to release the at least one volatile aromatic product.
Claim 1 differs from Virgalitto in at least one of the two extremities of the straw comprising at least one dispensing opening located through the lateral wall of the hollow channel and placed at a distance from the at least one of the two extremities.
Nehaili discloses that conventional straws can generally be made from paper but that the disadvantage of conventional straws is that they tend to project the liquid drink therethrough straight to the back of the mouth so that said liquid disappears down the throat without the flavour of said liquid being fully appreciated by the consumer (page 1, ln 3 – 12). In order to provide a more flavourful experience Nehaili provides a straw with at least one of the two extremities of the straw comprising at least one dispensing opening located through the lateral wall of the hollow channel and placed at a distance from at least one of the two extremities which would fill the mouth more effectively and allow the flavour of the liquid to be better appreciated by allowing the liquid, i.e., drink to be projected towards the taste buds on the tongue (page 1, ln 19 – 30 and fig. 2 - 4). Nehaili is providing at least one of the two extremities of the straw with at least one dispensing opening located through the lateral wall of the hollow channel and placed at a distance from the at least one of the two extremities for the art recognized function of filling the mouth of the consumer more effectively to allow the flavour of a consumed drink to be better appreciated, that is to say to improve the sensory perception within the mouth by allowing a better placement of the liquid or semi-liquid product on the consumers tongue which is applicant’s disclosed reason for doing so as well. To therefore modify Virgalitto and provide at least one of the two extremities of the straw with at least one dispensing opening located through the lateral wall of the hollow channel and placed at a distance from the at least one of the two extremities as taught by Nehaili to more effectively appreciate the flavour of a drink would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Regarding the dispensing opening being placed at a distance from the at least one of the two extremities between 1 mm and 15 mm, or 3 mm – 10 mm once it was known to provide at least one of the two extremities of the straw with at least one dispensing opening located through the lateral wall of the hollow channel it is not seen that patentability would be predicated on the particular distance from the at least one of the two extremities absent strong and compelling evidence to the contrary. Where the only difference between the prior art straw and the claimed straw is a recitation of relative dimensions of the claimed straw and a straw having the claimed relative dimensions would not perform differently than the prior art straw, the claimed straw is not seen to be patentably distinct from the prior art straw (MPEP § 2144.04 IV. A.).
Regarding claim 5, Virgalitto in view of Nehaili disclose the at least one volatile aromatic product is an aroma of fruits (‘548, paragraph [0047])
Regarding claim 7, the limitation “manufactured by extrusion of a pasty material into the hollow elongated channel which is cut to the desired length and then dried” is a method limitation and does not determine the patentability of the product, unless the process produces unexpected results. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. MPEP 2113.
Regarding claim 9, Virgalitto in view of Nehaili disclose at least one of the two extremities is folded and/or sealed (flat closed end 12) (convex closes end 13) (‘622, page 2, ln 16 – 29).
Regarding claim 12 Virgalitto in view of Nehaili discloses there would be at least two dispensing openings (‘622, fig. 1 – 3).
Regarding claim 13, once it was known to provide a straw in the form of a hollow elongated channel it is not seen that patentability would be predicated on the on the specific shape of the hollow channel absent strong and compelling evidence to the contrary (MPEP § 2144.04 IV.B.).
Claims 6 and 14 – 16 are rejected under 35 U.S.C. 103 as being unpatentable over Virgalitto et al. US 2005/0089548 in view of Nehaili GB 2 198 622 in view of Li US 2019/0313819.
Claim 6 differs from Virgalitto, if at all, in view of Nehaili in the straw being manufactured from a sustainable material.
Li discloses plastic straws can take a very long time ( e.g., up to 1000 years) to decompose, that plastic straws discarded on the road are not aesthetically pleasing, and that while plastic straws thrown into ocean can be photo-degraded to break down into smaller toxic parts said toxic parts can be consumed by fish and in turn the toxic parts are consumed by people eating the fish. In the case of incinerating the plastic straws in an incinerator, dioxins and dioxin-like compounds are generated and in turn create air pollutants. Further, the ingestion and created pollutants may cause diseases, allergies and even death to humans. Li further discloses that to solve the forgoing issues it is desirable to provide drinking straws made of paper (paragraph [0003] – [0007]). To therefore modify Virgalitto in view of Nehaili and manufacture the straw from paper as taught by Li if necessary to avoid the ingestion of toxic substances by people and to avoid polluting the environment would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Regarding claim 16, as set forth in the rejection of claim 6 Virgalitto in view of Nehaili in view of Li discloses the straw would comprise paper. Once it was known to make the straw from paper it is not seen that patentability would be predicated on the paper being white or kraft, i.e., the particular colour of the paper as kraft paper is normally considered to be a brown paper, absent strong and compelling evidence to the contrary.
Regarding claims 14 and 15, because claim 6 is in the form of a Markush group, and Virgalitto in view of Nehaili in view of Li teaches the straw would comprise paper, it is not required that Virgalitto in view of Nehaili in view of Li meet the further limitation of the non-selected groups via subsequent dependent claims.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Virgalitto et al. US 2005/0089548 in view of Nehaili GB 2 198 622 2001/0032645 in view of Wallace US 2013/0020402.
Claim 8 differs from Virgalitto in view of Nehaili in the external surface of the hollow elongated channel having at least one hook shaped element.
Wallace discloses that straws are commonly used with juice boxes given to young children to prevent large spills but that a major problem associated with the juice box and associated straw is the tendency for children to pull the straw out of the juice box at an inopportune time and the spilling the contained liquid and/or throwing the soiled straw onto the floor which creates a mess needing to be cleaned up and resulting in the straw being no longer usable for its intended purpose (paragraph [0006]). In order to resolve the above issues Wallace discloses that it was conventional and well established in the art to provide a straw (11) that is easily inserted in the opening of a juice box but cannot be easily removed by providing said straw with a hook shaped element (14) which would prevent withdrawal of said straw from the package into which said the straw has been inserted (paragraph [0034] – [0040], fig. 2A – 2D).
To therefore modify Virgalitto in view of Nehaili and provide the straw with a hook shaped element which would prevent withdrawal of the straw from the package into which said straw has been inserted to prevent children from removing said straw and creating messes as taught by Wallace would have been an obvious matter of design and/or choice to the ordinarily skilled artisan.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Wallace US 2013/0020402 as further evidenced by Xuan US 5,052,614 in view of Virgalitto et al. US 2005/0089548 in view of Nehaili GB 2 198 622.
Regarding claim 10, Wallace discloses a closed package (juice box) capable of packing and dispensing a liquid product, which closed package comprises a wall capable of being pierced by a straw and which closed package comprises a housing located on a face of said closed package said housing capable of arranging, that is to say that said face of said package would have an attached straw attached to and removable from said face of the closed package (paragraph [0005]). Said straw is capable of being used to consume the liquid or semi-liquid edible product from the package wherein said edible product is contained and the straw comprises a hollow elongated channel having two extremities.
Xuan provides further evidence that it was old, well established, and conventional to arrange a straw in a housing located on one face of a closed package for packing and dispensing a liquid or semi-liquid product (col. 3, ln 20 – 26 and fig. 1).
Claim 10 differs from Wallace as further evidenced by Xuan in the straw further comprising a coating comprising at least one volatile aromatic product, said coating being capable of releasing said volatile aromatic product with the air that is mixed to said liquid or semi-liquid edible product, at the time the latter is sipped through said hollow channel.
Virgalitto discloses a straw capable of being used to consume a liquid or semi-liquid edible product from a package in which package the liquid or semi-liquid edible product is contained. The straw has a coating (inner surface of a straw) (paragraph [0080]) which coating comprises at least one volatile aromatic product that is that is microencapsulated in the coating (paragraph [0012]) and capable of releasing the at least one volatile aromatic product into air that is mixed with the liquid or demi-liquid edible product at a time the liquid or semi-liquid product when the liquid or semi-liquid edible product is sipped through the hollow elongated channel and the at least one volatile aromatic product is stored within a capsule which is coated or similarly attached to a surface of the straw (paragraph [0012] and [0080]). Since the at least one volatile aromatic product would be released when the straw is used for said straws intended purpose, that is consumption of a beverage, it is obvious that the capsule would be capable of melting at a predetermined temperature to release the at least one volatile aromatic product. Virgalitto is providing the straw with at least one volatile aromatic product for the art recognized as well as applicant’s intended function, which is to provide enhanced product appeal to a consumer by permitting flavourants and scents to be combined with beverages to present a desired flavour/scent without the need for the consumer to consciously have to mix together the ingredients (‘548, paragraph [0080]). To therefore modify Wallace and provide the straw with a coating comprising at least one volatile aromatic product capable of releasing the volatile aromatic product with the air that is mixed with said liquid or semi-liquid edible product as taught by Virgalitto would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Claim 10 differs from Wallace as further evidenced by Xuan in view of Virgalitto in at least one of the two extremities of the straw comprising at least one dispensing opening located through the lateral wall of the hollow channel and placed at a distance from the at least one of the two extremities.
Nehaili discloses that conventional straws can generally be made from paper but that the disadvantage of conventional straws is that they tend to project the liquid drink therethrough straight to the back of the mouth so that said liquid disappears down the throat without the flavour of said liquid being fully appreciated by the consumer (page 1, ln 3 – 12). In order to provide a more flavourful experience Nehaili provides a straw with at least one of the two extremities of the straw comprising at least one dispensing opening located through the lateral wall of the hollow channel and placed at a distance from at least one of the two extremities which would fill the mouth more effectively and allow the flavour of the liquid to be better appreciated by allowing the liquid, i.e., drink to be projected towards the taste buds on the tongue (page 1, ln 19 – 30 and fig. 2 - 4). Nehaili is providing at least one of the two extremities of the straw with at least one dispensing opening located through the lateral wall of the hollow channel and placed at a distance from the at least one of the two extremities for the art recognized function of filling the mouth of the consumer more effectively to allow the flavour of a consumed drink to be better appreciated, that is to say to improve the sensory perception within the mouth by allowing a better placement of the liquid or semi-liquid product on the consumers tongue which is applicant’s disclosed reason for doing so as well. To therefore modify Wallace as further evidenced by Xuan in view of Virgalitto and provide at least one of the two extremities of the straw with at least one dispensing opening located through the lateral wall of the hollow channel and placed at a distance from the at least one of the two extremities as taught by Nehaili to more effectively appreciate the flavour of a drink would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Regarding the dispensing opening being placed at a distance from the at least one of the two extremities between 1 mm and 15 mm, or 3 mm – 10 mm once it was known to provide at least one of the two extremities of the straw with at least one dispensing opening located through the lateral wall of the hollow channel it is not seen that patentability would be predicated on the particular distance from the at least one of the two extremities absent strong and compelling evidence to the contrary. Where the only difference between the prior art straw and the claimed straw is a recitation of relative dimensions of the claimed straw and a straw having the claimed relative dimensions would not perform differently than the prior art straw, the claimed straw is not seen to be patentably distinct from the prior art straw (MPEP § 2144.04 IV. A.).
Response to Arguments
Applicant’s arguments with respect to the claims have been fully and carefully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAIM A SMITH whose telephone number is (571)270-7369. The examiner can normally be reached Monday-Thursday 09:00-18:00.
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/C.S./
Chaim SmithExaminer, Art Unit 1791 12 June 2026
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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