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 .
Drawings
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
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.
Claims 1-20 are 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.
Regarding claim 1, a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) {MPEP § 2173.05(p)}. Claim 17 recites similar issues.
The metes and bounds of the term “flexible” are not defined in applicant’s disclosure.
The phrase “the forward portion” in claim 6 lacks antecedent basis.
The phrase “therebetween” in claim 11 is unclear.
Claims 15 and 18 recite antecedent basis issues.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-11, 13-16, and 18-19 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 discloses a frame assembly for a riding saddle, the frame assembly comprising:
a base that provides a seat for a rider (25 of figure 7), with the base including a pair of flexible arms (29 as summarized in the abstract “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”); 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 between the pair of flexible arms to form a swell forward of the rider in use (50/57/52),
wherein the cap is a deformable element (as previously described in the abstract to meet the definition of “deformable” provided by applicant in applicant’s paragraph 0041), and
wherein a width of the frame assembly conforms to natural contours of an animal when the pair of flexible arms of the base are coupled to a brace that is sized to fit withers of the animal (34).
Regarding claim 2, Gorenschek discloses the frame assembly of claim 1, wherein the base includes a bridge that extends between the arms (13 of figure 7), with the deformable element of the support member resting atop the bridge to increase a height thereof (figure 6).
Regarding claim 3, Gorenschek discloses the frame assembly of claim 2, wherein the base includes a lip that extends at least partly around a perimeter of the bridge (such as anywhere along the perimeter edges of the bridge), with the deformable element of the support member being received against the lip (via 55/56/etc. as shown in figure 7).
Regarding claim 4, Gorenschek discloses the frame assembly 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 (near 55/dotted line of element 57/element 50 of figure 7).
Regarding claim 5, Gorenschek discloses the frame assembly 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 52 and the side elements are the side “flanges” near 55 in figure 7).
Regarding claim 6, Gorenschek discloses the frame assembly of claim 4, wherein the side elements are attached to the base and at least partially overlay the deformable element, that the forward portion being held in position with respect to the base by the side elements (when element 50 is the side elements in figure 7 and the deformable element is 52/57).
Regarding claim 7, Gorenschek discloses the frame assembly of claim 4, wherein the side elements are substantially rigid (as shown and described).
Regarding claim 8, Gorenschek discloses the frame assembly of claim 4, wherein the side elements comprise a mounting surface that is configured to rest upon the base (all of the previously identified side elements rest upon the base at least indirectly) and a bearing surface that extends substantially perpendicular therefrom, the bearing surface projecting outwardly from a side body of the animal (all of the previously identified side elements comprise a dimension/surface that meets this recitation).
Regarding claim 9, Gorenschek discloses the frame assembly of claim 8, wherein the base includes at least one depression, with the mounting surface of each side element being received and located in position upon the base by the at least one depression (such as the depressions associated with 41/59/56 in figures 6-7).
Regarding claim 10, Gorenschek discloses the frame assembly 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 discloses the frame assembly 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 therebetween (21 of figure 5).
Regarding claim 13, Gorenschek discloses the frame assembly of claim 1, wherein the base is formed from a polymeric material (column 3 lines 14-18).
Regarding claim 14, Gorenschek discloses a riding saddle incorporating the frame assembly of claim 1 (see previous rejections).
Regarding claim 15, Gorenschek discloses a modular riding saddle, comprising: a frame assembly as claimed in claim 1; and a brace selected to fit the withers of the animal and coupled to the pair of flexible arms of the base of the frame assembly (see previous rejections).
Regarding claim 16, Gorenschek discloses the modular riding saddle of claim 15, wherein the support member further includes a pair of side elements (see previous rejections), with the side elements being removable from the base (as Gorenschek shows the build up of the saddle comprises attaching the elements together, it is inherent that the various elements are also removable from one another).
Regarding claim 18, Gorenschek discloses a method of preparing the riding saddle of claim 14, comprising the steps of: fitting the support member to the base; and coupling a 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 discloses 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).
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) 12, 17, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gorenschek.
Regarding claim 12, Gorenschek teaches the frame assembly 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 17, Gorenschek teaches the modular riding saddle of claim 15, but does not specify wherein the brace is selected from a plurality of interchangeable braces of the riding saddle, with each of the braces being of differing 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 various size options, in order to accommodate different sized horses. This concept is old and well known in the art.
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 claim 17 rejection).
Response to Arguments
Applicant's arguments filed 11/18/25 have been fully considered but they are not persuasive.
Applicant’s arguments towards the drawing objections are not convincing for at least the reasons listed in 37 CFR 1.84(b)(2).
The rest of applicant’s arguments are addressed in the updated rejections above in light of the amendments to the claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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