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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/23/26 has been entered.
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.
Claim 8 is rejected under 35 U.S.C. 112(b) 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.
The recitations of claim 8 are unclear with regards to the “bearing surface.” The bearing surface is not clearly described/identified in applicant’s disclosure/figures.
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.
Claim(s) 1-2, 4-13, 15, and 18-20 is/are rejected under 35 U.S.C. 102(a)(1&2) as being anticipated by Gorenschek US 3,835,621.
Regarding claim 1, Gorenschek teaches a riding saddle, comprising:
an adjustable frame assembly configured to conform to natural contours of an animal to which the saddle is to be fitted (the abstract summarizes “A saddle with a flexible saddletree contained therein having a sheet-like seat member and having resilient padding on the underside allowing a continuous conforming fit to the back of a horse as the back of the horse changes shape due to muscle movement while the horse is in motion”), the adjustable frame assembly including:
a base that provides a seat for a rider (25 of figure 7), with the base including a pair of flexible arms (29 as described in at least column 4 lines 3-6) and a bridge that extends between the arms (near 13); and
a support member that is fitted to the base and adapted to support the rider, the support member including a cap that rests atop the base and extends between the arms to form a swell forward of the rider in use (50/57/52); and
a brace coupled to the arms of the base (34) and selected to fit the withers of the animal (inherent),
wherein the cap is a deformable element (where the previously identified section of the abstract describes the elements of the saddle as “deformable”/flexible and any of elements 50/57/52 would then meet the definition of “deformable” provided by applicant in applicant’s paragraph 0041; additionally claim describes “flexible pommel-like means secured to said frontal portion of said seat member”) that allows for a width of the frame assembly to be set to conform to the natural contours of the animal (as again previously described in the identified section of the abstract);
but does not specify by interchanging the brace with one of a different size.
However, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to interchange the brace element for one with a different/proper fitting size; in order to avoid pain to the horse; since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art.
Regarding claim 2, Gorenschek teaches the riding saddle of claim 1, wherein the cap rests directly atop the bridge to increase a height thereof (where element 52 may be the bridge and 50 may be the cap).
Regarding claim 4, Gorenschek teaches the riding saddle of claim 1, wherein the support member further includes a pair of side elements that extend outwardly from the arms, with the side elements being arranged to bear against upper legs of the rider (where 50 may be the support member).
Regarding claim 5, Gorenschek teaches the riding saddle of claim 4, wherein the side elements of the support member extend from the deformable element that is arranged therebetween (when the deformable element is the middle arch of element 50).
Regarding claim 6, Gorenschek teaches the riding saddle of claim 4, wherein the side elements are attached to the base and at least partially overlay the cap, such that the cap is held in position with respect to the base by the side elements (when element 57 is the cap).
Regarding claim 7, Gorenschek teaches the riding saddle of claim 4, wherein the side elements are substantially rigid (as shown and described).
Regarding claim 8, Gorenschek teaches the riding saddle of claim 4, wherein the side elements comprise a mounting surface that is configured to rest upon the base (as shown) and a bearing surface that extends substantially perpendicular therefrom, the bearing surface projecting outwardly from a side body of the animal (as shown, as best understood by the Examiner).
Regarding claim 9, Gorenschek teaches the riding saddle of claim 8, wherein the base includes at least one depression (such as those associated with 41/56/etc.), with the mounting surface of each side element being received and located in position upon the base (as represented in figure 6) by the at least one depression (where the arrangement of the connectors and depressions provide the arrangement shown in figure 6).
Regarding claim 10, Gorenschek teaches the riding saddle of claim 1, further comprising a cover that is attached to the base and extends over the support member such that the support member and the base have a substantially unitary appearance (inherent to those with ordinary skill in the art).
Regarding claim 11, Gorenschek teaches the riding saddle of claim 1, further comprising a lining that is attachable to an underside of the base for bearing against a back of the animal, with the brace being sandwiched between the lining and the underside of the base (21 of figure 5).
Regarding claim 12, Gorenschek teaches the riding saddle of claim 1, but does not specify wherein the deformable element of the support member is formed of a foam material.
However, such material is known. Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to provide such material, in order to accommodate design preferences for a vegan saddle, etc.; since it has been held that a prima facie obviousness exists where the selection of a known material is based on its suitability for its intended use.
Regarding claim 13, Gorenschek teaches the riding saddle of claim 1, wherein the base is formed from a polymeric material (column 3 lines 14-18).
Regarding claim 15, Gorenschek teaches a system, comprising: a riding saddle as claimed in claim 1 (see previous rejections);
but does not specify a plurality of braces for use with the riding saddle, with each of the braces being of a different size.
However, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to provide a plurality of size options, in order to enable the system to be built up for horses of various sizes; since a change in size is generally recognized as being within the level of ordinary skill in the art and mere duplication of parts has no patentable significance unless a new and unexpected result is produced.
Regarding claim 18, Gorenschek teaches a method of preparing the riding saddle of claim 1, comprising the steps of: fitting the support member to the base; and coupling the brace to the base, the brace being sized to fit the withers of an animal, to adjust a width of the base to conform to the animal (see previous rejections, where even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process).
Regarding claim 19, Gorenschek teaches the method of claim 18, wherein the step of fitting the support member to the base comprises attaching the side elements to the base, with the deformable element being at least partly held in position with respect to the base by the side elements (see previous rejections, where even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process).
Regarding claim 20, Gorenschek teaches the method of claim 18, but does not specify further comprising the step of: selecting the brace from one of a plurality of braces of different sizes that are interchangeably couplable to the base (see previous rejections).
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not disclose or make obvious the combination of limitations recited in claims 1-3; particularly, with the deformable element of the support member being received against the lip, etc.
Response to Arguments
Applicant's arguments filed 4/23/26 have been fully considered but they are not persuasive.
Applicant’s argument that the identified section near 13 in figure 7 does not disclose the “bridge” is not convincing. The rejection does not rely on the “void” to teach the bridge but instead the present material near 13. See annotated figure 7 below.
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Applicant’s argument that brace 34 is “in no way” attached to arms 29 is not convincing at least because figure 7 clearly shows such elements attached together. If brace 34 is in no way attached to arms 29 then brace 34 would be free-floating.
The remainder of applicant’s arguments are addressed in the updated rejections above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WONG whose telephone number is (571)272-7889. The examiner can normally be reached Monday through Friday from 8:00am to 4:30pm MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Timothy Collins can be reached at (571)272-6886. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA B WONG/Primary Examiner, Art Unit 3644
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