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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 7, 2026 has been entered.
Response to Amendment
Applicant’s reply filed August 7, 2026 is hereby acknowledged. Claim 1 was amended therewith, and claims 5 and 6 are “New”. Thus, claims 1-6 are pending and are addressed below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5 and 6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 5, it should first be noted that the “Remarks” portion of the reply filed August 7, 2026 identifies specification “paragraph [0025]”, as well as “Figures 7 through 11e” as to where the new limitation set forth in the claim is clearly supported in the originally filed disclosure. However, it does not appear that such purported support clearly exists in these locations. In fact, this Office has not been able to locate any expressed or implicit disclosure in the originally filed specification, so as to clearly support, “the curvilinear and semi-helical form of said main body” necessarily existing “in its natural, unstressed configuration”, so as to comply with 35 U.S.C. 112(a).
Regarding claim 6, it should first be noted that the “Remarks” portion of the reply filed August 7, 2026 identifies specification “paragraph [0025]”, as well as “Figures 7 through 11e” as to where the new limitations set forth in the claim are clearly supported in the originally filed disclosure. However, it does not appear that such purported support clearly exists in these locations. In fact, this Office has not been able to locate any expressed or implicit disclosure in the originally filed specification, so as to clearly support, “the radial distance from said linear extension changes non-monotonically, first increasing and then decreasing toward said inlet opening”, so as to comply with 35 U.S.C. 112(a).
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 1-6 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.
Regarding claim 1, on line 11, the recitation, “the centerline of said connector head” lacks clear antecedent basis.
Regarding claim 3, on line 3, the introduction of, “a linear extension projecting from a centerline of said connector head” is unclear. What is the relationship between this newly-introduced feature, as compared to that introduced on line 11 of claim 1?
Regarding claim 6, the metes and bounds of the entire claim are not understood. More specifically, the claim makes reference to “the radial distance from said linear extension...”, but fails to define the other feature delimiting this “distance”. Thus, when reading the claim, one must ask, “the radial distance from said linear extension” to what “changes non-monotonically, first increasing and then decreasing, toward said inlet opening”? Also, as essentially noted above in paragraph 5 of the instant Office action, the limitations set forth in claim 6 do not find clear support in the specification, and thus clarity with respect to the claim limitations cannot be gained in light of the specification.
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.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakhaeinejad, US Patent Application Publication No. 2011/0062169.
As to claim 1, Nakhaeinejad (see Figs. 1, 4 and 5) shows an extension device comprising: a connector head (4) and a main body (3) formed of an elastic material (as clearly evident by Figs. 4 and 5; as well as the description in at least paragraphs [0032]-[0033]) and extending from said connector head, wherein the connector head includes a straw opening (opening defined at uppermost end of “4”) and the main body has an inlet opening (opening defined at lowermost end of “3”), wherein said inlet opening and said straw opening are connected by a continuous cavity, wherein the improvement comprises: said main body having a curvilinear and semi-helical form which collapses under axial force (see again, Figs. 1, 4 and 5; and see again, paragraphs [0032]-[0033]), said curvilinear and semi-helical form comprising less than one revolution about a linear extension projecting from a centerline of said connector head.
As to the newly-introduced recitation, “said curvilinear and semi-helical form comprising less than one revolution about a linear extension projecting from a centerline of said connector head”, it is important to note that the limitations which follow the transitional term “comprising” must be interpreted so as to have an open-ended scope. As such, “comprising less than one revolution about a linear extension projecting from a centerline of said connector head” encompasses a device which can include one or more of such revolutions. In the event that the aforementioned recitation was intended to use one of the closed-ended transitional phrases “consisting of” or “consisting essentially of”, it should also be noted that the originally filed specification does not appear to set forth any criticality with respect to the “curvilinear and semi-helical form” as having “less than one revolution about a linear extension projecting from a centerline of said connector head”. In fact, these terms are not stated in the originally filed specification at all. As to the preamble recitation, “for a straw useful in beverage containers” such may only be considered to have limited to no patentable weight, because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951). It should further be noted that the device shown by Nakhaeinejad is clearly useful in beverage containers, and there is nothing which would preclude one from connecting a known straw device to portion “4” of Nakhaeinejad, applied to the recited “connector head”.
As to claim 2, Nakhaeinejad shows the extension as in claim 1, and wherein said connector head and said main body are a monolithic unit (see again, Figs. 1, 4 and 5).
As to claim 3, Nakhaeinejad shows the extension as in claim 1. Also, as to the recitation, “wherein said curvilinear and semi-helical form are created by projecting a helical reference line upon a teardrop-shaped solid centered upon a linear extension projecting from a centerline of said connector head”, such is merely a product-by-process limitation, which sets forth a process for creating a feature of the product defined by claim 1. The patentability of a product does not depend on its method of production. If the product in a product-by-process claim is the same as or an obvious variant from a product in the prior art, the claim is unpatentable even though the prior product was made by a different process (see MPEP 2113). In this case, the product defined in claim 1 is anticipated by Nakhaeinejad, as set forth above, and thus claim 3 is considered to also be anticipated.
As to claim 4, Nakhaeinejad shows the extension as in claim 3, and wherein said connector head and said main body are a monolithic unit (see again, Figs. 1, 4 and 5).
As to claim 5, Nakhaeinejad shows the extension as in claim 1, and wherein the curvilinear and semi-helical form of said main body exists in its natural, unstressed configuration (as evidenced by Fig. 5, as compared to Fig. 4).
As to claim 6, Nakhaeinejad shows the extension as in claim 1, and also shows the limitations recited in claim 6, as well as the claim limitations can be understood (see Figs. 1, 4 and 5).
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gieson, US Patent Application Publication No. 2006/0255169.
As to claim 1, Gieson (see Figs. 1, 2 and 3) shows an extension device (14) comprising: a connector head (30) and a main body (body of 14) formed of an elastic material (paragraph [0025] of Gieson expressly discloses exemplary materials for forming 14, each of which inherently exhibits a great amount of measurable elasticity, with such examples including “silicone”, which is one of the exact same exemplary materials expressly disclosed by Applicant in paragraph [0024] of the instant application specification) and extending from said connector head, wherein the connector head includes a straw opening (36, as appearing in Fig. 3 at the terminal end of 14) and the main body has an inlet opening (at reference number 28, as shown in Fig. 1; but apparently incorrectly referred to with reference number 26 in paragraph [0022]), wherein said inlet opening and said straw opening are connected by a continuous cavity, wherein the improvement comprises: said main body having a curvilinear and semi-helical form (see Fig. 1; and, see paragraph [0023]) which collapses under axial force (it is abundantly clear that the main body 14 of Gieson is capable of collapsing under axial force, particularly since it meets all of the recited structural limitations of the claim, and is made from the exact same material disclosed by Applicant), said curvilinear and semi-helical form comprising less than one revolution about a linear extension projecting from a centerline of said connector head.
As to the newly-introduced recitation, “said curvilinear and semi-helical form comprising less than one revolution about a linear extension projecting from a centerline of said connector head”, it is again important to note that the limitations which follow the transitional term “comprising” must be interpreted so as to have an open-ended scope. As such, “comprising less than one revolution about a linear extension projecting from a centerline of said connector head” encompasses a device which can include one or more of such revolutions. In the event that the aforementioned recitation was intended to use one of the closed-ended transitional phrases “consisting of” or “consisting essentially of”, it should also be noted that the originally filed specification does not appear to set forth any criticality with respect to the “curvilinear and semi-helical form” as having “less than one revolution about a linear extension projecting from a centerline of said connector head”. In fact, these terms are not stated in the originally filed specification at all. Still further, in the event that the aforementioned recitation was intended to use one of the closed-ended transitional phrases “consisting of” or “consisting essentially of”, it is also important to note, (at least) paragraph [0023] of Gieson expressly states that the extension device “can be cut to a given length according to distance of the container from the user”. Thus, in the event that the distance of container (24) of Gieson from a given user dictates cutting the extension device to a length whereby the curvilinear and semi-helical form consists of less than one revolution about a linear extension projecting from a centerline of said connector head, which would be encompassed by the disclosure set forth in (at least) paragraph [0023] of Gieson, then such would provide a basis for an obviousness modification rationale. As to the preamble recitation, “for a straw useful in beverage containers” such may only be considered to have limited to no patentable weight, because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951). It should further be noted that the device shown by Gieson is clearly useful in beverage containers, and there is nothing which would preclude one from connecting a known straw device to portion “30” of Gieson, applied to the recited “connector head”.
As to claim 2, Gieson shows the extension as in claim 1, and wherein said connector head and said main body are a monolithic unit (see again, Fig. 1).
As to claim 3, Gieson shows the extension as in claim 1. Also, as to the recitation, “wherein said curvilinear and semi-helical form are created by projecting a helical reference line upon a teardrop-shaped solid centered upon a linear extension projecting from a centerline of said connector head”, such is merely a product-by-process limitation, which sets forth a process for creating a feature of the product defined by claim 1. The patentability of a product does not depend on its method of production. If the product in a product-by-process claim is the same as or an obvious variant from a product in the prior art, the claim is unpatentable even though the prior product was made by a different process (see MPEP 2113). In this case, the product defined in claim 1 is anticipated by Gieson, as set forth above, and thus claim 3 is considered to also be anticipated.
As to claim 4, Gieson shows the extension as in claim 3, and wherein said connector head and said main body are a monolithic unit (see again, Fig. 1).
As to claim 5, Gieson shows the extension as in claim 1, and wherein the curvilinear and semi-helical form of said main body exists in its natural, unstressed configuration (see paragraph [0023]).
As to claim 6, Gieson shows the extension as in claim 1, and also shows the limitations recited in claim 6, as well as the claim limitations can be understood (see Fig. 1).
Response to Arguments
Applicant's arguments, see the section under the heading, “Claim Rejections - 35 U.S.C. § 102” on pages 4-5 of the “Remarks” portion of the response filed August 7, 2026, have been fully considered but they are not persuasive.
In the aforementioned section of the “Remarks”, Applicant essentially states that neither of the prior art documents to “Nakhaeinejad” and “Gieson” can reasonably be said to anticipate claim 1 of the instant application, which now recites that “said curvilinear and semi-helical form” comprises “less than one revolution about a linear extension projecting from the centerline of saif connector head”. This Office does not agree. Applicant’s attention is hereby directed to paragraphs 9 and 10 of the instant Office action, as to how the aforementioned prior art documents still reasonably anticipate the claims of the instant application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARREN W GORMAN whose telephone number is (571)272-4901. The examiner can normally be reached Monday-Thursday 6:30-4:30.
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/DARREN W GORMAN/Primary Examiner, Art Unit 3752
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