Ex Parte Anderson

Patent Trial and Appeal Board

Feb 12, 2013

11534002 (P.T.A.B. Feb. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MICHAEL R. ANDERSON
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Appeal 2010-012341
Application 11/534,002
Technology Center 3700
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Before: LINDA E. HORNER, PHILLIP J. KAUFFMAN, and
NEIL A. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-012341
Application 11/534,002

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STATEMENT OF THE CASE
Michael R. Anderson (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-3.1 We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.

THE INVENTION
Appellant’s claimed invention is a drinking straw that dispenses one
or more substances or ingredients that have been deposited on the inside of
the straw and includes a one-way flow valve at the base of the drinking
straw that prevents any of the contents, once received into the drinking
straw, from being received back into the initial liquid container. Spec. 2.
Claim 1, the sole independent claim on appeal, is illustrative of the claimed
subject matter and is reproduced below:
1. A dispensing drinking straw for dispensing
substances affixed to the interior of a drinking straw
comprising:
a drinking straw having a top end, a bottom end and a
tubular shape with an inside passage;
at least one substance stored in the inside passage of said
drinking straw that can be dissolved with a liquid passing
through the drinking straw; and
a one-way liquid flow valve mounted within said straw
inside passage near the bottom end of said straw, said one-way
liquid control valve allowing the flow of liquid upwardly
through the straw under drawing pressure from a user and said
one-way valve being closed when the straw is not in use or
when a liquid is not being drawn through the straw thereby

1 Claims 4-6 are withdrawn from consideration. Ans. 2; Office Action dated
June 24, 2009, at 2.
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Application 11/534,002

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preventing any residual liquid remaining in the straw during the
drawing operation from returning or exiting out the bottom end
of the straw.

THE REJECTIONS
Appellant seeks review of the Examiner’s rejection of claims 1 and 3
under 35 U.S.C. § 103(a) as unpatentable over Villani (US 6,109,538; iss.
Aug. 29, 2000) and Gamblin (US 3,438,527; iss. Apr. 15, 1969), and of
claim 2 under 35 U.S.C. § 103(a) as unpatentable over Villani, Gamblin, and
Allen (US 4,581,013; iss. Apr. 8, 1986).

CONTENTIONS AND ISSUES
Regarding Claims 1 and 3, it is uncontested that Villani does not teach
using a one-way liquid flow valve mounted within the straw inside passage
near the bottom end of the straw, or discuss the prevention of any residual
liquid remaining in the straw from returning out the exit end of the straw.
Ans. 4, Br. 5. The Examiner relies upon Gamblin for these features.
Specifically with regard to the valve, Appellant argues that the one-way
valve taught in Gamblin prevents liquid from flowing in the primary
container upwardly into the straw, whereas Appellant’s valve in claims 1
and 3 specifically prevents liquid that has already been sucked into the straw
and combined with the dissolving substance in the straw body from
returning back into the container contents. Br. 5-6.
Regarding the rejection of claim 2, Appellant re-states the arguments
made above with respect to the combination of Villani and Gamblin.
Appellant further asserts that Allen is non-analogous art because it has
different structure and function than the claimed device. Br. 7.
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The issues presented by this appeal are whether the proposed
combinations would have led a person of ordinary skill in the art at the time
the invention was made to the Appellant’s claimed invention, and
specifically, (1) whether Gamblin teaches away from the invention of claims
1 and 3, and (2) whether with regard to claim 2, Allen is non-analogous art
to the claimed straw.

ANALYSIS
Appellant argues claims 1 and 3 together. Br. 5-6. We select claim 1
as the representative claim. See 37 C.F.R. § 41.37(c)(1)(vii).
As noted, claim 1 recites a “one-way liquid control valve allowing the
flow of liquid upwardly through the straw under drawing pressure from a
user and said one-way valve being closed when the straw is not in use.”
Claims App’x. at A-2. Gamblin discloses a straw and opening designed to
prevent spillage from the top of the straw (col. 1, ll. 55-65). Gamblin
prevents flow of liquid through the straw except in the presence of suction,
by use of a resilient device valve that expands when suction is terminated
“thereby… sealing the straw” (col. 1, ll. 50-53, 70-71).
Thus, Gamblin’s valve, like the claimed valve, allows the flow of
liquid upwardly through the straw under drawing pressure from a user and
closes when the straw is not in use. Because Gamblin’s valve operates in the
same manner as the claimed valve, Gamblin would not have led a person of
ordinary skill in the art “in a direction divergent from the path taken by the
applicant.” In re Gurley, 27 F.3d at 553. Consequently, we sustain the
rejection of claims 1 and 3.
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Claim 2, dependent on claim 1, recites that the one-way liquid flow
valve is a “thin disc-shaped cover acting as a flap connected to said base that
can be raised when fluid flows upwardly through the straw and [can] be
closed when there is no fluid being drawn through the straw.” Claims App’x
at A-2. Appellant repeats the argument against Gamblin from the rejection
of claim 1 (Br. 6), which is unconvincing for the reasons discussed, supra.
With regard to Appellant’s non-analogous art argument (Br. 6),
admittedly, the “device in Allen is a medical dosing device” (Br. 7)
including two conduits, to be able to inject medication liquid into a dilute
liquid; however, for the reasons that follow, the Allen reference is not non-
analogous art.
“Whether a reference in the prior art is ‘analogous’ is a fact question.”
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d 1561, 1568 n.9 (Fed. Cir. 1987)). Two criteria
have evolved for answering the question: “(1) whether the art is from the
same field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.” Id. at 658-59 (citing In re Deminski, 796 F.2d
436,442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)).
Here, the art satisfies both criteria. The art is in the same field of
endeavor, and therefore would have been within the knowledge base from
which one of ordinary skill in the art would draw. Both are used in the
pharmaceutical/medical field, and indeed, Appellant’s invention is described
as a “drinking straw that can be used to dispense a substance such as
vitamins, pharmaceuticals, or diet supplements.” Abstract. The structure
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and function of Allen’s valve and that of claim 2 are similar in that Allen’s
one-way valve 23 is depicted as a flap and prevents flow in one direction.
See Allen, col. 5. ll. 24-27; fig. 7; see also In re Bigio, 381 F.3d 1320, 1325-
7 (Fed. Cir. 2004) (The “field of endeavor” test asks if the structure and
function of the prior art is such that it would be considered by a person of
ordinary skill in the art because of the similarity to the structure and function
of the claimed invention as disclosed in the application.)
With regard to being reasonably pertinent, Appellant sought to
prevent liquid in the straw from returning to the container after the user stops
drawing in, so that the dissolved substance in the straw is not permitted to
enter the container. Spec. 16-21. As a one-way valve utilized in the oral
administration of medicines, Allen’s valve 23 would have been reasonably
pertinent to the problem facing Appellant. See Allen, col. 1, ll. 66-68; col. 5,
ll. 24-27; fig. 7; see also In re Clay, 966 F.2d at 659.
Consequently, we sustain the rejection of claim 2.

CONCLUSION
The proposed combinations would have led a person of ordinary skill
in the art to the Appellant’s claimed invention. In particular, Gamblin does
not teach away from the proposed combination, and Allen is not
nonanalogous art.

DECISION
We AFFIRM the Examiner’s decision to reject claims 1-3.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
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AFFIRMED

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