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 .
Information Disclosure Statement
The IDS filed on March 19, 2026 is hereby acknowledged and has been placed of record. Please find attached a signed copy of the IDS.
Response to Amendment
Applicant’s reply filed March 23, 2026 is hereby acknowledged. Claims 1 and 3 were amended therewith. Claims 1-4 remain pending and are addressed below.
Drawings
The replacement drawing sheets were received on March 23, 2026. These drawings are acceptable.
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 1-4 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, the metes and bounds of the recitation, “wherein the collapse is not as with compression of a coil spring” cannot clearly be quantified in a manner which can put the public on notice as to what does or does not infringe on the claim. More specifically, the recited comparison of how the claimed device collapses, as compared to how a “coil spring” compresses, requires a clear definition/quantification of distinct compression characteristics of the “coil spring”. Since there are virtually limitless coil springs in existence, with compression characteristics of such coil springs varying greatly between specific examples thereof, based on the uniquely different physical characteristics of such limitless exemplary coil springs, then the comparison between how the claimed device collapses, versus how such an un-defined coil spring compresses, cannot be understood. It is acknowledged and understood that (at least) paragraph [0025] of Applicant’s originally-filed specification essentially states the same comparison as claimed, however definiteness for compliance with 35 U.S.C. 112(b) for the claim limitation in question is not remedied in light of what is stated in the specification for the reasons discussed above.
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 1-4 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) including a straw opening (opening defined at uppermost end of “4”), and a main body (3) extending from said connector head and having an inlet opening (opening defined at lowermost end of “3”), said inlet opening and said straw opening being connected by a continuous cavity having a centerline, and said main body being formed of an elastic material (as clearly evident by Figs. 4 and 5; as well as the description in at least paragraphs [0032]-[0033]), 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]). As to the recitation, “wherein the collapse is not as with compression of a coil spring”, Applicant’s attention is directed to paragraph 6 of the instant Office action, which articulates why this limitation is indefinite, and thus cannot clearly be defined. Thus, in view of this, the claim can still be considered anticipated by the applied prior art, as the collapse of the Nakhaeinejad device need only be different from a compression of any known coil spring. Since, as also discussed above in paragraph 6, there are virtually limitless coil springs in existence, with compression characteristics of such coil springs varying greatly between specific examples thereof, based on the uniquely different physical characteristics of such limitless exemplary coil springs, then it is reasonable to expect a collapse of the Nakhaeinejad device to be different from compression of at least one of the virtually limitless examples of known coil springs. 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, 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, wherein said connector head and said main body are a monolithic unit (see again, Figs. 1, 4 and 5).
Claim 1-4 are rejected, as well as the claims can be understood, 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) including a straw opening (36), and a main body (body of 14) extending from said connector head and having an inlet opening (at reference number 28, as shown in Fig. 1; but apparently incorrectly referred to with reference number 26 in paragraph [0022]), said inlet opening and said straw opening being connected by a continuous cavity having a centerline, and said main body being 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), 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). As to the recitation, “wherein the collapse is not as with compression of a coil spring”, while such is indefinite (as set forth above in paragraph 6 of the instant Office action), for purposes of applying prior art in this instance, this limitation appears to be intended to mean that the form of the main body allows for collapse under axial force, but has the ability to not axially expand and contract, as is typical with the motion of known coil-type spring elements. With respect to this, Applicant’s attention is directed to paragraph [0023] of Gieson, which states that the device “can be formed and bent into different shapes”, yet “has sufficient structural strength so that once” the device is “manipulated, it retains the desired shape”. In this regard, the device of Gieson clearly meets this recitation. 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, 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, wherein said connector head and said main body are a monolithic unit (see again, Fig. 1).
Response to Arguments
Applicant's arguments, see the last two paragraphs on page 8 of the “Remarks” portion of the reply filed March 23, 2026, have been fully considered but they are not persuasive. Applicant broadly asserts that the prior art to Nakhaeinejad, as applied to the claims in the Office action mailed December 23, 2025, does not reasonably read of amended claim 1, which now includes the limitation, “wherein the collapse is not as with compression of a coil spring”. As articulated above in paragraph 8 of the instant Office action, when taking a broad but reasonable interpretation of this limitation, this Office does not agree.
Conclusion
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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