Ex Parte Greenberg

Patent Trial and Appeal Board

Jan 15, 2013

10684882 (P.T.A.B. Jan. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ALEX M. GREENBERG

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Appeal 2010-012557
Application 10/684,882
Technology Center 3700
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Before: MICHAEL C. ASTORINO, PATRICK R. SCANLON and
BARRY L. GROSSMAN, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-012557
Application 10/684,882

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4-9, 11-15, and 17-22. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

The Claimed Subject Matter
The claimed subject matter relates to a straw holder for vertically
supporting and orienting a drinking straw in the mouth of a bottle. Spec.
[0001]. Claims 1, 5, 11, and 14 are the independent claims. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A straw holder for supporting a drinking straw in a
mouth of a bottle, said holder being made from a sheet material
and comprising:
a straw support portion dimensioned for placement across
a mouth of a bottle and comprising an aperture formed by at
least one slit in said sheet material designed to receive a
straw therethrough and to vertically support said straw with
respect to said support portion; and
a bottle retaining portion comprising at least one turn
extending around said retaining portion, said at least one turn
comprising a first turn having an end attached to said straw
support portion, and dimensioned to extend around an outer
surface of the bottle, wherein said at least one turn extends
spirally around said straw support portion, said at least one turn
having an inner edge with an inner radius and an outer edge
with an outer radius wherein said inner and outer radii increase
substantially continuously around said at least one turn.
Appeal 2010-012557
Application 10/684,882

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References
The Examiner relied upon the following prior art references:
Chao US Des. 387,396 Dec. 9, 1997
Berger US 5,992,658 Nov. 30, 1999
Shaw US 4,247,016 Jan. 27, 1981

Rejections
Appellant seeks review of the following rejections (App. Br. 6):
1. Claims 5-7 rejected under 35 U.S.C. § 102 as anticipated by
Chao;
2. Claims 1, 2, 4, 9, 11, 13, 15, 17, and 22 rejected under 35
U.S.C. § 103 as unpatentable over Chao in view of Shaw; and
3. Claims 14 and 18-21 rejected under 35 U.S.C. § 103 as
unpatentable over Chao in view of Shaw and Berger.
Thus, the issues before us are whether Chao anticipates claim 5 and
whether the subject matter of independent claims 1, 11, and 14, and the
claims dependent thereon, would have been obvious to a person of ordinary
skill in the relevant technology based on the applied references.
ANALYSIS
Claims 5-7 rejected under 35 U.S.C. § 102
Appellant argues in relevant part that Chao fails to disclose “inner and
outer radii” that are “substantially constant” as recited in independent claim
5. App. Br. 7-8. Appellant’s position is that the strands in Chao form spiral
shapes that do not have substantially constant radii. Id.
The Examiner found that strands disclosed in Chao have inner and
outer radii that are substantially constant, as called for in claim 5. Ans. 3.
Appeal 2010-012557
Application 10/684,882

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Chao is a design patent, so there is no written disclosure explaining its
structure or function. We know from the title of the patent that the Chao
disclosure concerns a “spiral ornament,” which indicates that the strands of
the ornament are in a spiral configuration. A conventional dictionary
definition of “spiral” is “winding in a continuous and gradually widening (or
tightening) curve, either around a central point on a flat plane or about an
axis so as to form a cone.”1 The Examiner’s finding that Chao discloses
strands that have substantially constant radii (Ans. 3) is inconsistent with
this definition.
To support the finding that the strands in Chao have inner and outer
radii that are substantially constant around at least one turn of the bottle
retaining portion, the Examiner compared Figure 3 of the application to an
annotated Figure 2 in Chao, labeling a first end and a second end of the
Chao structure. Ans. 8. However, any similarities between these figures do
not support the Examiner’s finding. Figure 3 of the application does not
illustrate radii that are substantially constant; Figure 3 illustrates radii that
increase continuously. Spec. [0017]; Reply Br. 1-2. It is Figure 5 of the
application that shows inner and outer radii that are substantially constant, as
called for in claim 5. Thus, the similarities noted by the Examiner between
the annotated Figure 2 of Chao and Figure 3 of the application provided on
page 8 of the Examiner’s Answer confirm that Chao discloses a spiral
configuration, i.e., a configuration with a continuous and gradually widening
(or tightening) curve. The similarities do not establish that Chao discloses a
configuration with inner and outer radii that are substantially constant.

1 Oxford Dictionary, Oxford University Press, 2012, available at
http://oxforddictionaries.com/definition/english/spiral (last visited Jan.
10, 2013).
Appeal 2010-012557
Application 10/684,882

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The Examiner has not pointed to any evidence that adequately
supports the finding that Chao discloses inner and outer radii that are
substantially constant, as called for in claim 5. Thus, we reverse the
rejection under 35 U.S.C. § 102 of independent claim 5, and the rejection of
claims 6 and 7 dependent directly or indirectly on claim 5. 2
Claims 1, 2, 4, 9, 11, 13, 15, 17, and 22
rejected under 35 U.S.C. § 103
Appellant argues that there is no reason to combine the spiral
ornament of Chao with any features of the cup lid disclosed by Shaw. App.
Br. 8. Appellant also argues that even if the Chao and Shaw references were
combined, “the combination fails to teach or suggest the hanging spiral part
of the ornament of Chao providing a support or bottle retaining function.”
App. Br. 9.
The Examiner found that Chao discloses a straw support portion
dimensioned for placement across a mouth of a bottle and having an aperture
designed to receive a straw and to vertically support the straw. Ans. 4-5.

2 Appellant has not argued the rejection of claim 8 under 35 U.S.C. § 103 as
unpatentable over Chao in view of Berger, nor is it grouped with arguments
for other grounds of rejection. This rejection was set out in paragraph 7 of
the Final Rejection mailed July 8, 2009. Claim 8 depends from claim 5.
The Notice of Appeal dated Dec. 8, 2009 lists claim 8 as being appealed.
The “Status of Claims” section in the Appeal Brief also states that claim 8 is
“on appeal.” App. Br. 2. However, the “Grounds of Rejection to Be
Reviewed in Appeal” section in the Appeal Brief does not list the rejection
of claim 8. App. Br. 6. Nevertheless, here, where the rejection of the
independent claim has been reversed, and whereas the additional reference,
Berger, cited against the dependent claim does not compensate for the
deficiencies of Chao, as discussed below, the rejection of dependent claim 8
also is reversed.
Appeal 2010-012557
Application 10/684,882

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The Examiner also found that Chao discloses a bottle retaining portion. Id.
The Examiner cited specifically to Figure 5 in Chao. Id. at 4.
The Examiner found that Shaw discloses a lid of thermoformed plastic
sheet, having a straw support portion in the form of a slit or an aperture.
Ans. 5. The Examiner has not pointed to any evidence that the lid in Shaw
is made from a thermoplastic material. Shaw discloses that the cup 10 is
formed of paper, polystyrene or other material generally utilized for such
purposes. Shaw, col. 2, ll. 50-53. Shaw also states that the straw 25 is
formed of plastic, reinforced paper or the like (col. 3, ll. 3-4); that the straw
may have a plastic underlay sheet 27 (col. 2, ll. 51-54); and that the lid/straw
combination may have a plastic overlay sheet 28. Regarding the lid 20,
however, Shaw discloses only that the lid 20 is “basically conventional”
(col. 2, l. 62), without disclosing the material from which the lid is made.
There is no evidence to support the Examiner’s finding that the lid of Shaw
is formed from a thermoformed plastic sheet.
The Examiner concluded that it would have been obvious to one of
ordinary skill in the art at the time the invention was made to form the holder
of Chao of a plastic sheet and to provide the hole in the form of a slit as
taught by Shaw. Ans. 5. The rationale provided by the Examiner for
making this combination was that “[d]oing so would provide a holder of
strong, thin and flexible material capable of covering a bottle mouth
opening, supporting a straw, and retaining itself on the bottleneck to allow
for drinking from a bottle via a straw to prevent contaminants from entering
the open bottle mouth.” Id.
The Examiner has not pointed to any evidence or provided a rationale
that supports the findings that Chao discloses in Figure 5 or elsewhere a
Appeal 2010-012557
Application 10/684,882

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straw support portion dimensioned for placement across a mouth of a bottle
and an aperture designed to receive a straw and to vertically support the
straw, and a bottle retaining portion as called for in independent claim 1.
As stated above, there is no written disclosure explaining the structure
or function of the Chao “Spiral Ornament” design patent. We know from
Figure 8 that the spiral ornament can be attached to a balloon and that the
strands of the ornament hang from the balloon. There is nothing to suggest
that the strands of the ornament can support a straw or can be retained on a
bottle. There is no evidence or rationale that Chao discloses a "straw
support portion" or a ''bottle retaining portion" as called for in claim 1.
Shaw relates to a lid structure containing a stored straw and, more
particularly, to a lid-straw combination wherein the straw is maintained in a
sanitary condition during storage. Shaw, col. 1, ll. 9-12. The Examiner has
not provided a reasoned explanation as to how combining Chao and Shaw
would result in the invention called for in claim 1.
Accordingly, we reverse the rejection of claims 1, 2, 4, 9, 11, 13, 15,
17, and 22.3

3 Appellant has not argued the rejection of claim 12 under 35 U.S.C. § 103
as unpatentable over Chao in view of Shaw and Berger nor is it grouped
with arguments for other grounds of rejection. This rejection was set out in
paragraph 9 of the Final Rejection mailed July 8, 2009. Claim 12 depends
from claim 1. The Notice of Appeal dated Dec. 8, 2009 lists claim 12 as
being appealed. The “Status of Claims” section in the Appeal Brief also
states that claim 12 is “on appeal.” App. Br. 2. However, the “Grounds of
Rejection to Be Reviewed in Appeal” section in the Appeal Brief does not
list the rejection of claim 12. App. Br. 6. Nevertheless, here, where the
rejection of the independent claim has been reversed, and whereas the
additional reference, Berger, cited against the dependent claim does not
compensate for the deficiencies of Chao and Shaw, as discussed below, the
rejection of dependent claim 12 also is reversed.
Appeal 2010-012557
Application 10/684,882

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Claims 14 and 18-21 rejected under 35 U.S.C. § 103
Independent claim 14 calls for a straw holder with a straw support
portion and a bottle retaining portion, and also having an adhesive disposed
on one side of the straw support portion that contacts the mouth of the bottle.
The Examiner cited Berger for its disclosure of an adhesive (16) for
surrounding an aperture (20) in a straw holder (18). Ans. 6. The Examiner
concluded that it would have been obvious to further modify the Chao/Shaw
structure with an adhesive surrounding on the straw support portion as called
for in claim 14. Ans. 7.
Appellant argues that Berger fails to cure the deficiencies of the Chao
and Shaw references. App. Br. 10-11.
For the reasons stated above in our analysis of the rejections of claims
1 and 5, the Examiner’s rejection of claims 14 and 18-21 is not sustainable.

DECISION
We reverse the decision of the Examiner to reject claims 1, 2, 4-9, 11-
15, and 17-22.

REVERSED

msc