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 2,18-26,34,35 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.
For claim 2, as stated in the previous Office action, the commemorative belt buckle having a bar and post are not being claimed because they are merely parts of functional recitation of “adapted for securing and displaying a commemorative belt buckle” in the preamble. However, in lines 11-16, it appears that applicant is further positively defining detail features of the commemorative belt buckle. Thus, the scope of the claim is unclear and inconsistent because it is not clear if applicant is attempting to claim the commemorative belt buckle functionally or positively.
All other claims depending on claim 2 are also rejected the same.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2,18,24-26,34,35 are rejected under 35 U.S.C. 103 as being unpatentable over Niehues (EP 3991549 A1) in view of Thomas et al. (US 20230217894 A1) and Rotunno (US 20090151132 A1 as cited on form PTO-1449).
For claim 2, Niehues teaches a saddle pad for a horse adapted for securing and displaying a commemorative belt buckle (3), the commemorative belt buckle having a rubber band (18) and post )14,15) adapted so that the commemorative belt buckle is removably securable to a belt, comprising:
a seat for a rider (area on the pad where the rider sits);
a rear portion positioned more proximate towards a rear of the horse
as compared to the rider, wherein the rear portion provides display area for securing and displaying the commemorative belt buckle (fig. 1, the display area is where ref. 3 is located and it is in a rear portion of the saddle pad);
a belt (19) secured to the rear portion, the belt having a first end fixedly secured to the rear portion, and a second end that is not fixedly secured to the rear portion
wherein the commemorative belt buckle is removably secured to the saddle pad and is visible in the display portion to a person watching the rider ride the horse while using the saddle.
However, Niehues is silent about a saddle having a seat for a rider; the belt having one or more holes therein and having a first end fixedly secured to the rear portion, and a second end that is not fixedly secured to the rear portion; wherein the commemorative belt buckle is removably secured to the belt via the bar and post of the commemorative belt buckle and the one or more holes in the belt.
Rotunno teaches a buckle and strap assembly comprising a buckle (110) adapted to be removably secured to a belt portion (para. 0033 discusses belt strap) via a bar (132) and post (120) of the buckle and one or more holes (para. 0034 states: “Unexpectedly, it was found that making tip 122 broader relieved pressures on spike 120 when inserting through a passage hole in a strap”) through the belt. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the buckle and belt configuration of Rotunno in place of the buckle and belt of Niehues in order to provide a more secure attachment for the buckle and belt configuration.
Thomas et al. teach a saddle comprising a seat for a rider (fig. 3A, seat portion of saddle 302); a buckle and belt configuration (306,304,100) mounted on the saddle (302); a belt having a first end (end at ref. 306) fixedly secured to a front portion of the saddle, and a second end (end at ref. 100) that is not fixedly secured to the front portion. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the commemorative belt buckle and belt of Niehues as modified by Rotunno be mounted on a saddle as taught by Thomas et al., depending on the user’s preference to display the commemorative on a saddle instead of a saddle pad, for it is known to display indicia on the saddle or any part of the saddle equipment as desired by the user as demonstrated in both Niehues and Thomas et al.. In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a first end of the belt fixedly secured to the saddle and a second end that is not fixedly secured as taught by Thomas et al. for the belt of Niehues as modified by Rotunno in order to prevent the belt from falling off or lost due to one end being fixed on the saddle.
The combination of Niehues as modified by Rotunno and Thomas et al. would result in the belt having the first end fixedly secured to the rear portion (the fixedly secured is relied on with Thomas et al. and Niehues already teaches securing the commemorative belt buckle in the rear portion), and the second end that is not fixedly secured to the rear portion (the not fixedly secured is relied on with Thomas et al. and Niehues already teaches securing the commemorative belt buckle in the rear portion); wherein the commemorative belt buckle is removably secured to the belt via the bar and post of the commemorative belt buckle and the one or more holes in the belt (as relied on with Rotunno). Note that, technically, the commemorative belt buckle is not being claimed as stated in the 112 rejection.
For claim 18, Niehues as modified by Rotunno and Thomas et al. teaches the saddle of claim 2, wherein the rear portion comprises a rear skirt portion of the saddle (Niehues already teaches placing the buckle at the rear portion in fig. 1, thus, with modification of the saddle as taught by Thomas et al., the buckle and belt configuration would be mounted at a rear skirt portion of the saddle of Thomas et al.).
For claim 24, Niehues as modified by Rotunno and Thomas et al. teaches the saddle of claim 2, but is silent about further comprising a second rear portion and a second belt, wherein two commemorative belt buckles are displayable on the saddle. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a second rear portion and a second belt, wherein two commemorative belt buckles are displayable on the saddle of Niehues as modified by Rotunno and Thomas et al., since it is has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (depending on the user’s preference to have more than one display areas for the commemorative so as to allow by-passer from different angle of the saddle be able to view the commemorative, and also Niehues stated that the display can be on both side of the saddle pad: “It goes without saying that such markings can be applied to both sides of the saddle pad”). St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
For claim 25, Niehues as modified by Rotunno and Thomas et al. teaches the saddle of claim 24, but is silent about wherein the two commemorative belt buckles are displayed on opposite sides of the saddle. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the two commemorative belt buckles are displayed on opposite sides of the saddle of Niehues as modified by Rotunno and Thomas et al., since it has been held that rearranging parts of an invention involves only routine skill in the art (depending on the user’s preference to display commemorative on different areas of the saddle; also Niehues stated that the display can be on both side of the saddle pad: “It goes without saying that such markings can be applied to both sides of the saddle pad”). In re Japikse, 86 USPQ 70.
For claim 26, Niehues as modified by Rotunno and Thomas et al. teaches the saddle of claim 2, further comprising a post securing element (120 of Rotunno) adapted to connect to the post of the commemorative belt buckle (as relied on Rotunno) when the post is positioned in a hole of the belt, wherein the post securing element secures the belt to the commemorative belt buckle via the post (as relied on Rotunno).
For claim 34, Niehues as modified by Rotunno and Thomas et al. teaches the saddle of claim 2, wherein the saddle comprises a Western style saddle (the saddle as relied on with Thomas et al. is similar to applicant’s, thus, it is considered as a Western style saddle).
For claim 35, Niehues as modified by Rotunno and Thomas et al. teaches the saddle of claim 2, wherein the commemorative belt buckle is displayed while not impeding competitive riding of the rider on the saddle (the location of the commemorative belt buckle at the rear portion as taught in Niehues will not impede the rider).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Niehues as modified by Rotunno and Thomas et al. as applied to claim 2 above, and further in view of DE 202018105002 U1 (herein DE002).
For claim 19, Niehues as modified by Rotunno and Thomas et al. teaches the saddle of claim 2, but is silent about wherein the rear portion comprises a backward facing portion of a cantle of the saddle.
DE002 teaches a saddle (1) comprising a decorative element (4) being placed in a backward facing portion of a cantle (13,14) of the saddle.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the commemorative belt buckle and belt of Niehues as modified by Rotunno and Thomas et al. be mounted on a backward facing portion of a cantle of the saddle as taught by DE002, depending on the user’s preference to display the commemorative on a backward facing portion of a cantle of the saddle or elsewhere on the saddle.
Claims 20,21 are rejected under 35 U.S.C. 103 as being unpatentable over Niehues as modified by Rotunno and Thomas et al. as applied to claim 2 above, and further in view of Strang (US 3707827 A).
For claims 20 & 21, Niehues as modified by Rotunno and Thomas et al. teaches the saddle of claim 2, but is silent about wherein the second end of the belt is securable to the saddle via a securing element, and wherein the securing element comprises a Conway buckle.
Strang teaches a securing element comprising a Conway buckle (18) for a belt. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ a Conway buckle as taught by Strang for the securing element in the saddle of Niehues as modified by Rotunno and Thomas et al., depending on the user’s preference to select known buckle as desired, especially a Conway buckle is known for use with leather belt and it requires no stitching to attach an end of the belt in a fixed position (as stated by Strang).
Claims 22,23 are rejected under 35 U.S.C. 103 as being unpatentable over Niehues as modified by Rotunno and Thomas et al. as applied to claim 2 above, and further in view of Michaelis (US 9089174 B1).
For claim 22, Niehues as modified by Rotunno and Thomas et al. teaches the saddle of claim 2, but is silent about wherein belt portion comprises a faux belt.
Michaelis teaches a belt (14) that is made out of faux material (“Alternatively, belt 14 may be a "faux" belt”). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the belt portion of Niehues as modified by Rotunno and Thomas et al. be made out of a faux material as taught by Michaelis, since 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 choice (faux material is cheaper than the genuine or real material). In re Leshin, 125 USPQ 416.
For claim 23, Niehues as modified by Thomas et al., Rotunno, and Michaelis teaches the saddle of claim 22, but is silent about wherein the faux belt has a first width at a portion under the commemorative belt buckle and a second width at the second end that engages with a Conway buckle, wherein the first width is greater than the second width. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the faux belt of Niehues as modified by Thomas et al., Rotunno, and Michaelis with a first width at a portion under the commemorative belt buckle and a second width at the second end that engages with a Conway buckle, wherein the first width is greater than the second width, since a mere change in size or shape of a component is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Applicant's arguments filed 9/15/2025 have been fully considered but they are not persuasive.
Applicant argued that “While Applicant traverses the rejections under Section 103, Applicant submits that claims resulted from the amendments here further amplify distinctions of Applicant's invention over Niehaus, Thomas and Rotunno (the cited references do not provide what the primary combined references are lacking.”
The examiner believes that the above 103 rejections are proper and read on the amended claims; thus, applicant’s argument is not persuasive. In addition, applicant did not argue in detail as to why the 103 rejections are not proper, thus, there is no response from the examiner.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SON T NGUYEN whose telephone number is (571)272-6889. The examiner can normally be reached 9:00 to 4:00.
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, Peter Poon can be reached at 571-272-6891. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Son T Nguyen/ Primary Examiner, Art Unit 3643