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 .
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 1-21 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 phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). The phrase “preferably” makes the claim limitation “wherein the carrier substance preferably has a specific flow resistance of less than 500 Pa*s/m and particularly preferably of less than 400 Pa*s/m, and most preferably of approximately 380 Pa*s/m” unclear since the examiner is unable to determine the metes and bounds of the claim limitation. For purposes of examination, examiner will read the above limitation as follows “wherein the carrier substance has a specific flow resistance of less than 500 Pa*s/m”.
Regarding claim 2, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of examination, the examiner will treat “wherein the aroma container is movable relative to the drinking straw, preferably along a longitudinal direction of the drinking straw” to read “wherein the aroma container is movable relative to the drinking straw along a longitudinal direction of the drinking straw”.
Claim 15 recites the limitation "the inner bottom" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 18, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of examination, the examiner will treat “wherein the aroma container is mounted on the drinking straw, preferably clipped on, wherein the aroma container includes a penetration member” to read “wherein the aroma container is mounted on the drinking straw, wherein the aroma container includes a penetration member”.
Regarding claim 21, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of examination, the examiner will treat “wherein preferably a side wall of the drinking vessel” to read “wherein a side wall of the drinking vessel”.
Dependent claims not specifically mentioned are rejected as depending from rejected base claims since they inherently contain the same deficiencies therein.
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.
Claims 1-10, 16, 17 and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Jager et al. (US 20200178712).
Regarding claim 1, Jager teaches a drinking device comprising (figure 2, reference 10): a drinking straw (figure 2, reference 18) with an inner flow channel (figure 2, inside reference 18) and a drinking end (figure 2, reference 28); and an aroma container (figure 2, reference 20) fixedly or detachably connected with the drinking straw (figure 2: reference 22 with 18) for adding an aroma substance to an air flow flowing out of the aroma container (figure 2, reference A and paragraph 10); wherein the aroma container includes at least one air outlet opening (figure 2, end of reference 22) which is in flow connection either with at least one aroma inlet opening into the inner flow channel of the drinking straw or with an aroma channel extending up to the drinking end of the drinking straw (figure 2, other end of 22 opposite the aroma container 20); wherein the aroma container is adapted to be able to be coupled with the drinking straw in such a way that, when applying a negative pressure at the drinking end of the drinking straw or when applying a negative pressure at a mouthpiece (figure 2, near reference 28) connected with the drinking end of the drinking straw, the air flow exits from the aroma container through the at least one air outlet opening (figure 2 and paragraph 10); and the aroma container includes an aroma chamber (figure 2, inside reference 20) containing a carrier substance for an aroma substance (paragraph 10).
Jager does not explicitly teach wherein the carrier substance has a specific flow resistance of less than 500 Pa-s/m. However, Jager discloses the claimed invention except for the carrier substance has a specific flow resistance of less than 500 Pa-s/m. The specific flow resistance is a results effective variable with the results being amount of aroma entering the drinking straw due to the pressure caused by drinking from the straw. It would have been obvious to one having ordinary skill in the art at the time the invention was made to the carrier substance has a specific flow resistance of less than 500 Pa-s/m, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 2, Jager teaches all of the claim limitations of claim 1, as shown above. Furthermore, Jager teaches wherein the aroma container is movable relative to the drinking straw (figure 11a and 11b, reference 20), along a longitudinal direction of the drinking straw (figure 11a and 11b, reference 20), between an activated position (figure 11b) and a non-activated position (figure 11a), wherein only in the activated position the at least one air outlet opening is in flow connection with the at least one aroma inlet opening or the aroma channel (figure 11b).
Regarding claim 3, Jager teaches all of the claim limitations of claim 1, as shown above. Furthermore, Jager teaches the aroma container includes the mouthpiece (figure 20b).
Regarding claim 4, Jager teaches all of the claim limitations of claim 3, as shown above. Furthermore, Jager teaches the aroma container has a conically shaped receiving area for attaching the drinking straw (figure 20b: To modify the shape of the aroma container with a conically shaped receiving area as claimed would entail a mere change in shape of the aroma container and yield only predictable results. "[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person's skill." KSR Int 'l v. Teleflex Inc., 127 S.Ct. 1740, 82 USPQ2d 1396 (2007). A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47).
Regarding claim 5, Jager teaches all of the claim limitations of claim 1, as shown above. Furthermore, Jager teaches wherein the drinking straw includes the aroma channel which is provided separately from the inner flow channel and ends at the drinking end of the drinking straw (figure 2, reference 22 and 18 at 28).
Regarding claim 6, Jager teaches all of the claim limitations of claim 1, as shown above. Furthermore, Jager teaches wherein the aroma container includes the aroma channel (figure 2, reference 22).
Regarding claim 7, Jager teaches all of the claim limitations of claim 1, as shown above. Furthermore, Jager teaches wherein the aroma container is formed between a first boundary wall surrounding the inner flow channel of the drinking straw (figure 33a and 33b, near reference 22b), and a second boundary wall formed by the aroma container (figure 33a and 33b, outer wall of container 20).
Regarding claim 8, Jager teaches all of the claim limitations of claim 1, as shown above. Furthermore, Jager teaches a sealing member (figure 2, reference 14) at the drinking straw, which extends around the drinking straw (figure 2, reference 14) and is suited to be mountable on drinking vessels with different diameters (figure 2, reference 12: This limitation has been treated as an intended use recitation. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of Jager is capable of performing the recited function.
Regarding claim 9, Jager teaches all of the claim limitations of claim 8, as shown above. Furthermore, Jager teaches wherein the sealing member is a continuously conical or stepped conical, rotationally symmetrical member (figure 2, reference 14: To modify the shape of the sealing member with a continuously conical or stepped conical, rotationally symmetrical member as claimed would entail a mere change in shape of sealing member and yield only predictable results. "[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person's skill." KSR Int 'l v. Teleflex Inc., 127 S.Ct. 1740, 82 USPQ2d 1396 (2007). A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47).
Regarding claim 10, Jager teaches all of the claim limitations of claim 8, as shown above. Furthermore, Jager teaches the sealing member is an elastic sealing grommet (figure 2, reference 14: It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416).
Regarding claim 16, Jager teaches all of the claim limitations of claim 1, as shown above. Furthermore, Jager teaches wherein the drinking straw has a receptacle for the aroma container, into which the aroma container can be inserted (figures 11a and 11b).
Regarding claim 17, Jager teaches all of the claim limitations of claim 1, as shown above. Furthermore, Jager teaches wherein the drinking straw includes a first longitudinal portion (figure 33b, reference 18 above 20) and a second longitudinal portion (figure 33b, reference 18 below 20), wherein the aroma container is attachable between the first longitudinal portion and the second longitudinal portion of the drinking straw (figure 33b, reference 20).
Regarding claim 19, Jager teaches all of the claim limitations of claim 1, as shown above. Furthermore, Jager teaches the inner flow channel of the drinking straw in some areas has a narrowing of the cross-section in the region of the aroma inlet opening (figure 32b).
Regarding claim 20, Jager teaches all of the claim limitations of claim 1, as shown above. Furthermore, Jager teaches a drinking vessel (figure 23b) comprising a bottom (figure 23b, bottom of the container) and at least one side wall extending from the bottom upwards (figure 23b, side wall of the container) and limiting a volume for receiving drinking liquid (figure 23b); and a drinking device of claim 1 (the rejection of claim 1 above).
Regarding claim 21, Jager teaches all of the claim limitations of claim 20, as shown above. Furthermore, Jager teaches the drinking straw of the drinking device is fixedly connected with the side wall of the drinking vessel (figure 23b), wherein a side wall of the drinking vessel directly limits the inner flow channel in some areas (figure 23b).
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Jager et al. (US 20200178712), as applied to claim 1 above, and further in view of KO (WO 2020054988).
Regarding claim 11, Jager teaches all of the claim limitations of claim 1, as shown above.
Jager does not explicitly teach the drinking straw is dividable in the longitudinal direction. However, Ko does teach the drinking straw is dividable in the longitudinal direction (figure 1, reference 100).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the device of Jager to be dividable in the longitudinal direction, as disclosed by Ko, because being dividable allows for easily cleaning the internal surface of the straw, as explained by KO (abstract).
Regarding claim 12, Jager teaches all of the claim limitations of claim 1, as shown above.
Jager does not explicitly teach the drinking straw has a film hinge which extends in the longitudinal direction and is configured to be opened in the longitudinal direction. However, Ko does teach the drinking straw (figure 1, reference 100) has a film hinge (figure 1, reference 120) which extends in the longitudinal direction and is configured to be opened in the longitudinal direction (figure 1).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the device of Jager to have a film hinge which extends in the longitudinal direction and is configured to be opened in the longitudinal direction, as disclosed by Ko, because being dividable allows for easily cleaning the internal surface of the straw, as explained by KO (abstract).
Regarding claim 13, Jager teaches all of the claim limitations of claim 1, as shown above.
Jager does not explicitly teach the drinking straw has a plurality of predetermined bending points. However, Ko does teach the drinking straw has a plurality of predetermined bending points (figure 3, reference 100a).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the device of Jager to have the drinking straw has a plurality of predetermined bending points, as disclosed by Ko, because having bending points make the straw dividable which allows for easily cleaning the internal surface of the straw, as explained by KO (abstract).
Regarding claim 14, Jager teaches all of the claim limitations of claim 1, as shown above.
Jager does not explicitly teach the drinking straw is elastically deformable. However, Ko does teach the drinking straw is elastically deformable (figure 1, reference 100).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the device of Jager to have the drinking straw is elastically deformable, as disclosed by Ko, because having an elastically deformable straw allows for easily cleaning the internal surface of the straw, as explained by KO (abstract).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Jager et al. (US 20200178712), as applied to claim 1 above, and further in view of Banach (US 20020036239).
Regarding claim 15, Jager teaches all of the claim limitations of claim 1, as shown above.
Jager does not explicitly teach a weight at the end opposite in the longitudinal direction to the drinking end of the drinking straw, which has a bearing surface for resting on an inner bottom of a drinking vessel. However, Banach does teach a weight (figure 9, reference 11) at the end opposite in the longitudinal direction to the drinking end of the drinking straw (figure 9, reference 3), which has a bearing surface for resting on an inner bottom of a drinking vessel (figure 9).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the device of Jager to have a weight at the end opposite in the longitudinal direction to the drinking end of the drinking straw, which has a bearing surface for resting on an inner bottom of a drinking vessel, as disclosed by Banach, because including the weight allows for anchoring the straw in place, as explained by Banach (paragraph 5).
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 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 419, 21, 25 and 27 of U.S. Patent No. 12,232,639. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, USP ‘639 (claim 1) teaches all of the claim limitations of claim 1.
Regarding claim 2, USP ‘639 (claim 2) teaches all of the claim limitations of claim 2.
Regarding claim 3, USP ‘639 (claim 4) teaches all of the claim limitations of claim 3.
Regarding claim 4, USP ‘639 (claim 5) teaches all of the claim limitations of claim 4.
Regarding claim 5, USP ‘639 (claim 6) teaches all of the claim limitations of claim 5.
Regarding claim 6, USP ‘639 (claim 7) teaches all of the claim limitations of claim 6.
Regarding claim 7, USP ‘639 (claim 8) teaches all of the claim limitations of claim 7.
Regarding claim 8, USP ‘639 (claim 9) teaches all of the claim limitations of claim 8.
Regarding claim 9, USP ‘639 (claim 10) teaches all of the claim limitations of claim 9.
Regarding claim 10, USP ‘639 (claim 11) teaches all of the claim limitations of claim 10.
Regarding claim 11, USP ‘639 (claim 12) teaches all of the claim limitations of claim 11.
Regarding claim 12, USP ‘639 (claim 13) teaches all of the claim limitations of claim 12.
Regarding claim 13, USP ‘639 (claim 14) teaches all of the claim limitations of claim 13.
Regarding claim 14, USP ‘639 (claim 15) teaches all of the claim limitations of claim 14.
Regarding claim 15, USP ‘639 (claim 16) teaches all of the claim limitations of claim 15.
Regarding claim 16, USP ‘639 (claim 17) teaches all of the claim limitations of claim 16.
Regarding claim 17, USP ‘639 (claim 18) teaches all of the claim limitations of claim 17.
Regarding claim 18, USP ‘639 (claim 19) teaches all of the claim limitations of claim 18.
Regarding claim 19, USP ‘639 (claim 21) teaches all of the claim limitations of claim 19.
Regarding claim 20, USP ‘639 (claim 25) teaches all of the claim limitations of claim 20.
Regarding claim 21, USP ‘639 (claim 27) teaches all of the claim limitations of claim 21.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hall et al. (US 6,112,749) discloses a drinking container with an aroma container.
St. Gelais (US 20140166680) discloses a straw with a secondary fluid container.
Waggoner et al. (US 9,795,242) discloses a straw with an additive delivery system.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAVIER A PAGAN whose telephone number is (571)270-7719. The examiner can normally be reached Monday - Thursday: 6:30am-4:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Stashick can be reached at (571) 272-4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAVIER A PAGAN/Primary Examiner, Art Unit 3735