Ex Parte Hamer

Board of Patent Appeals and Interferences

Aug 31, 2009

10725786 (B.P.A.I. Aug. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOUGLAS TAYLOR HAMER
____________

Appeal 2009-001522
Application 10/725,786
Technology Center 3700
____________

Decided: August 31, 2009
____________

Before: JENNIFER D. BAHR, MICHAEL W. O'NEILL, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-001522
Application 10/725,786

2
STATEMENT OF THE CASE
Douglas Taylor Hamer (Appellant) appeals under 35 U.S.C. § 134
(2002) from the Examiner’s decision rejecting claim 17, which is the only
claim pending in the present application. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant’s claimed invention is directed to a novelty “straw to be
used by two people to share a viscous drink in a humorous and quasi-
competitive manner.” Spec., para. [0001].
Claim 17, reproduced below, is the only claim involved in this appeal.
17. A beverage dispenser, comprising;
a semi-rigid hollow straw having two open
ends, said straw having sidewalls with a minimum
thickness of 0.02 inches and said straw being
substantially open from end to end;
end-caps on each of said two open ends;
a beverage selected from the group
consisting of jellied drinks, granatas[1], slushes, and
precursors thereof filling the hollow of said straw;
said end-caps being removable;
whereby said beverage is dispensed in either
direction from said straw by application of positive
pressure at one of said two open ends and
application of negative pressure at the other of said
two open ends.

1 Claim 17 uses the term “granatas,” so we use that term throughout the
opinion, when discussing the claim limitation. However, we presume
Appellants intended the term “granitas,” as used in the Specification, in
paragraph [0004].
Appeal 2009-001522
Application 10/725,786

3
The Rejection
Appellant seeks review of the Examiner’s rejection of claim 17 under
35 U.S.C. § 103(a) as being unpatentable over Benefiel (US 4,981,468,
issued Jan. 1, 1991) and Spangrud (US 5,045,195, issued Sep. 3, 1991).

SUMMARY OF DECISION
We AFFIRM.
ISSUE
In rejecting claim 17, the Examiner found that Benefiel describes a
semi-rigid hollow straw having two open ends, removable caps 36 on each
open end, and an agent 20 comprising a liquid/suspension formulation. Ans.
3. The Examiner further found that Benefiel’s liquid/suspension formulation
meets the limitation in claim 17 of slushes and precursors, and that a liquid
to be ingested is a beverage. Ans. 4. The Examiner found that Benefiel
does not describe the minimum sidewall thickness of 0.02 inches called for
in claim 17. Ans. 3. The Examiner found that Spangrud teaches a beverage
dispenser comprising a straw having a sidewall thickness of about 0.035
inches. Id. The Examiner thus concluded that it would have been obvious
to a person of ordinary skill in the art to modify the device of Benefiel by
providing a minimum sidewall thickness of 0.02 inches as taught by
Spangrud, in order to form a more durable dispenser. Id.
Appellant argues that neither Benefiel’s straw nor Spangrud’s straw
contains a beverage, much less “a beverage selected from the group
consisting of jellied drinks, granatas, slushes, and precursors thereof” as
called for in claim 17. App. Br. 7. In particular, Appellant argues that the
Appeal 2009-001522
Application 10/725,786

4
particles or granules of Benefiel do not constitute a beverage, but become an
additive thereto. Id.
Appellant additionally argues that neither Benefiel nor Spangrud
describes a straw that is substantially open from end to end, as called for in
claim 17. App. Br. 9. In particular, Appellant points to Benefiel’s teaching
of a grid and an optional one-way valve as teaching away from a bi-
directional dispensing of its agent. App. Br. 9-10.
Appellant further argues that Benefiel does not teach the claimed
sidewall thickness, and alleges that the Examiner has combined Benefiel and
Spangrud, without explanation, to address this limitation. App. Br. 11.
According to Appellant, if one were to fairly combine Spangrud with
Benefiel, the result would be a straw having granules or particulate, as well
as a filtration medium, which would still be operable in only one direction.
App. Br. 12.
Accordingly, the issues raised in this appeal are as follows:
(1) Has Appellant demonstrated the Examiner erred in finding that
Benefiel satisfies the limitation in claim 17 of “a beverage
selected from the group consisting of jellied drinks, granatas,
slushes, and precursors thereof”?
(2) Has Appellant demonstrated the Examiner erred in finding that
Benefiel describes a straw that is “substantially open from end
to end,” as called for in claim 17?
(3) Does Appellant’s argument that the Examiner has combined
Benefiel and Spangrud, without explanation, to address the
minimum sidewall thickness limitation demonstrate error in the
Examiner’s rejection? More particularly, is Appellant correct
Appeal 2009-001522
Application 10/725,786

5
that a fair combination of Benefiel and Spangrud would result
in a straw having both therapeutic agent and a filtration
medium?

FACTS PERTINENT TO THE ISSUES
FF1 The Examiner found that Benefiel’s liquid/suspension
formulation meets the limitation in claim 17 of slushes and
precursors, and that a liquid to be ingested is a beverage. Ans.
4. Appellant does not dispute those findings.
FF2 An ordinary and customary meaning of the term “beverage” is
“any liquid for drinking, esp. other than water.” Webster's New
World Dictionary 136 (David B. Guralnik ed., 2nd Coll. Ed.,
Simon & Schuster, Inc. 1984).
FF3 Jellied drinks are not liquids. They are solids.
FF4 Appellants’ Specification does not define the term “precursor.”
In fact, the term “precursor” does not even appear in the
Specification, apart from the claims.
FF5 Ordinary and customary meanings of the term “precursor”
include “a person or thing that goes before; forerunner;
harbinger” and “a substance that precedes and is the source of
another substance.” Webster's at 1120.
FF6 A liquid/suspension formulation is a “precursor” of a jellied
drink or slush, in that it can be turned into a gel (jellied drink)
or slush upon chilling.
FF7 Benefiel describes a delivery device for containing and
administering orally active therapeutic agents. Abstract. A
Appeal 2009-001522
Application 10/725,786

6
conformed-tube embodiment of Benefiel’s device includes a
hollow tube 212 having inlet and outlet ends 214 and 216
provided with removable end caps 36, and a loop containing the
therapeutic agent 20. Col. 5, ll. 34-38, col. 7, ll. 43-67, Fig. 6.
FF8 Benefiel teaches using the conformed-tube embodiment to
contain liquid/suspension formulations of therapeutic agents, as
well as therapeutic agents in particulate or pelletized form. Col.
5, ll. 45-49.
FF9 The patient can ingest therapeutic agent 20 by removing the end
caps 36, placing the delivery device in one end of a
conventional drinking straw 228 positioned in reservoir 222
containing consumable liquid 224, and sipping. Therapeutic
agent is carried by the liquid moving up the tube 212 into the
patient’s mouth and alimentary canal. Col. 6, ll. 43-48, col. 7,
ll. 58-67, and Fig. 6.
FF10 The delivery device 210 depicted in Figure 6 of Benefiel
appears reasonably capable of use either in the orientation
shown or in an inverted orientation. In other words, Benefiel’s
device appears reasonably capable of delivery of the therapeutic
agent in either direction.
FF11 In contrast to the embodiment of Figures 1-3, in which a grid 18
is provided for retaining therapeutic agent (col. 6, ll. 67-68),
Benefiel does not disclose a grid in the conformed-tube
embodiment of Figure 6. The loop will contain the agent 20
without the use of a grid.
Appeal 2009-001522
Application 10/725,786

7
FF12 Benefiel discloses an optional one-way valve to prevent
possible siphoning of the therapeutic agent out the inlet end of
the tube, in case the patient’s sipping action is stopped before
dose administration is complete. Col. 6, ll. 22-28. Benefiel
emphasizes, however, that such a valve is not a critical
component of the delivery device. Col. 6, ll. 28-30. As such,
Benefiel clearly contemplates a delivery device that is not
provided with a one-way valve.
FF13 Benefiel is silent with respect to the wall thickness of the tube.
Benefiel teaches that “[t]he mechanical properties and
dimensions of the tube 12 [or 212] can be widely varied while
still retaining delivery device functionality in accordance with
this invention.” Col. 6, ll. 64-66.
FF14 Spangrud discloses a portable personal water filter, which
resembles an oversized drinking straw in its appearance. Col.
2, ll. 15-17. Spangrud’s filter 10 comprises a filter unit 13
including a generally tubular and elongate, plastic housing 14
having an overall length of about 6 inches and a wall thickness
of about 0.035 inches. Col. 3, ll. 29-31 and 39-42.

PRINCIPLES OF LAW
Claim construction
When claim terminology is construed in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
Appeal 2009-001522
Application 10/725,786

8
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
Obviousness
Rejections on obviousness grounds must be supported by “some
articulated reasoning with some rational underpinning” to combine the
known elements in the manner required in the claim at issue. KSR Int’l. Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). However, “the analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id.
Teaching away
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994).

ANALYSIS
Issue (1)
Appellant’s argument that the particles or granules of Benefiel do not
constitute a beverage, much less “a beverage selected from the group
consisting of jellied drinks, granatas, slushes, and precursors thereof” as
called for in claim 17, is not persuasive, as it is not directed to the
liquid/suspension formulation relied upon by the Examiner as the beverage
in making the rejection. The Examiner found that Benefiel’s
liquid/suspension formulation (FF8) meets the limitation in claim 17 of
Appeal 2009-001522
Application 10/725,786

9
slushes and precursors, and that a liquid to be ingested is a beverage (FF1).
Appellant does not dispute those findings (FF1), which, for the reasons that
follow, appear to be fully supported by the evidence of record.
Although the term “beverage” may ordinarily be understood to be any
liquid for drinking (FF2), claim 17, in reciting “a beverage selected from the
group consisting of jellied drinks, granatas, slushes, and precursors thereof”
expressly uses the term “beverage” in a manner so as to encompass items
which are not liquids, such as jellied drinks (gels), which are solids (FF3).
Accordingly, we construe the term “beverage” as including any substance
for drinking. In that sense, the liquid/suspension formulation of Benefiel’s
therapeutic agent (FF8) is a “beverage.” Inasmuch as Appellant has not
defined the term “precursor” in the Specification, or even used the term in
the Specification so as to provide guidance as to its meaning (FF4), we
construe “precursor” in accordance with its customary usage, such as “a
person or thing that goes before; forerunner; harbinger” or “a substance that
precedes and is the source of another substance” (FF5). A liquid/suspension
formulation is a “precursor” of a jellied drink or slush, in that it can be
turned into a gel (jellied drink) or slush upon chilling (FF6).
For the above reasons, Appellant has not persuaded us that Benefiel’s
liquid/suspension formulation of the therapeutic agent 20 is not “a beverage
selected from the group consisting of jellied drinks, granatas, slushes, and
precursors thereof,” as called for in claim 17.
Issue (2)
As clearly depicted in Figure 6, Benefiel’s conformed-tube
embodiment of the delivery device 210 comprises a hollow tube open from
the inlet end 214 to the outlet end 216, so as to permit therapeutic agent 20,
Appeal 2009-001522
Application 10/725,786

10
as well as consumable liquid 224, to flow freely to the outlet end and into
the patient’s mouth by sipping action (FF7, FF9). In contrast to the
embodiment of Figures 1-3, in which a grid 18 is provided for retaining
therapeutic agent (col. 6, ll. 67-68), Benefiel does not disclose a grid in the
conformed-tube embodiment of Figure 6 (FF11). The loop will contain the
agent 20 without the use of a grid (id.).
Moreover, the delivery device 210 depicted in Figure 6 of Benefiel
appears reasonably capable of use either in the orientation shown or in an
inverted orientation (FF10). In other words, Benefiel’s device appears
reasonably capable of delivery of the therapeutic agent in either direction
(id.). Benefiel discloses an optional one-way valve, but emphasizes that
such a valve is not required (FF12). As such, Benefiel clearly contemplates
a delivery device that is not provided with a one-way valve (id.).
For the above reasons, Appellant’s argument does not persuade us
either that Benefiel’s tube is not open from end to end, as called for in claim
1, or that Benefiel teaches away from a bi-directional dispensing of its agent.
Issue (3)
Appellant’s argument that the Examiner has combined Benefiel and
Spangrud, without explanation, to address the minimum sidewall thickness
limitation, is not accurate. As already noted above, the Examiner found that
Benefiel does not describe the minimum sidewall thickness of 0.02 inches
called for in claim 17, but found that Spangrud teaches a beverage dispenser
comprising a straw having a sidewall thickness of about 0.035 inches. Ans.
3. The Examiner thus concluded that it would have been obvious to a person
of ordinary skill in the art to modify the device of Benefiel by providing a
Appeal 2009-001522
Application 10/725,786

11
minimum sidewall thickness of 0.02 inches as taught by Spangrud, in order
to form a more durable dispenser. Id.
Benefiel is silent with respect to the wall thickness of the tube (FF13).
Spangrud teaches, in a portable personal water filter device resembling an
oversized drinking straw, providing the tubular housing with a wall
thickness of about 0.035 inches (FF14). Although Spangrud does not
specify any reason for providing such a wall thickness, we find that a person
of ordinary skill in the art would have reasonably inferred from Spangrud’s
teachings that such a wall thickness would provide a sufficiently sturdy
device while still resembling a drinking straw, even if somewhat oversized.
Accordingly, the Examiner’s articulated reasoning for modifying Benefiel’s
tube to provide a wall thickness of at least 0.020 inches, namely, in order to
form a more durable dispenser, is supported by rational underpinning.
Moreover, in cases where the difference between the claimed
invention and the prior art is some range or other variable within the claims,
it has been consistently held that, in order to establish nonobviousness, “the
applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Appellant has not made any such showing in this case.
For the above reasons, Appellant has not persuaded us that the
Examiner erred in concluding that it would have been obvious to a person of
ordinary skill in the art to provide the tube 212 of Benefiel’s delivery device
with a minimum wall thickness of 0.02 inches, as called for in claim 17.
We do not agree with Appellant that a fair combination of Benefiel
and Spangrud would result in a straw including both therapeutic agent and a
Appeal 2009-001522
Application 10/725,786

12
filter medium. Obviousness does not require that all of the features of the
secondary reference be bodily incorporated into the primary reference. See
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, the artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment. See Lear Siegler, Inc.
v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). The Examiner has
relied on Spangrud only for its teaching of a wall thickness of 0.035 inches
for a drinking straw-type device. The Examiner has not proposed
incorporating the filter medium of Spangrud into the delivery device of
Benefiel.

CONCLUSIONS
(1) Appellant has not demonstrated the Examiner erred in finding
that Benefiel satisfies the limitation in claim 17 of “a beverage
selected from the group consisting of jellied drinks, granatas,
slushes, and precursors thereof.”
(2) Appellant has not demonstrated the Examiner erred in finding
that Benefiel describes a straw that is “substantially open from
end to end,” as called for in claim 17.
(3) Appellant’s argument that the Examiner has combined Benefiel
and Spangrud, without explanation, to address the minimum
sidewall thickness limitation fails to demonstrate error in the
Examiner’s rejection. Further, Appellant is not correct that a
fair combination of Benefiel and Spangrud would result in a
straw having both therapeutic agent and a filtration medium.

Appeal 2009-001522
Application 10/725,786

13
DECISION
The Examiner’s decision is affirmed.
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) (2007).
AFFIRMED

hh

John B. Hardaway, III
NEXSEN PRUET JACOBS & POLLARD, LLC
P.O. Box 10107
Greenville, SC 29603