Detailed Office Action
The communication dated 5/7/2024 has been entered and fully considered. Claims 1-18 are pending.
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 Objections
Claims 7 and 16 are objected to because of the following informalities: in line 2 of claims 7 and 16, replace “on the back of equine the heated thermoplastic” with “on the back of equine, the heated thermoplastic”. Appropriate correction is required.
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.
Claims 1, 5, 9-10, 14, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STOVER (WO-2017035645-A1), hereinafter STOVER. Note that the italicized text below are the instant claims.
Regarding claims 1 and 10 (note that additional claim 1 limitations are in parenthesis), STOVER discloses A method for forming a saddle pad for an equine {[abstract]}, comprising:
a. heating (a flat blank of) a thermoplastic heat-moldable foam (of uniform thickness having a desired perimeter shape for a saddle pad) to an internal temperature whereat the heated thermoplastic heat-moldable foam when placed into a three-dimensional contoured shape will maintain that contoured shape after the heated thermoplastic heat-moldable foam has cooled {[abstract], [P1] note foam, [P2] note rider sitting on the saddle, [P4] note PE/EVA are thermoplastic, [FIG. 2] note desired perimeter shape, uniform thickness and flat blank of 12};
b. placing the heated thermoplastic heat-moldable foam on the back of the equine at a location below where a saddle will be positioned on the back of the equine {[abstract], [P1] note foam, [P2]};
c. placing the saddle atop the heated thermoplastic heat-moldable foam on the back of the equine to at least partially contour the heated thermoplastic heat-moldable foam to the shape of the back of the equine thereunder and the shape of the underside of the saddle thereover {[abstract], [P1] note foam, [P2]}; and
d. placing a weight on the saddle to further contour the heated thermoplastic heat-moldable foam to the shape of the back of the equine thereunder and the shape of the underside of the saddle thereover and not removing the weight until the heated foam blank cools sufficiently to maintain that contoured shape after the heated thermoplastic heat-moldable foam has cooled {[abstract], [P1] note foam, [P2] note rider sitting on the saddle is the weight, [P4] note PE/EVA are thermoplastic, [FIG. 2] note desired perimeter shape, uniform thickness and flat blank of 12}.
Regarding claims 5 and 14, STOVER discloses wherein the step of heating the thermoplastic heat-moldable foam blank heats the foam blank to an internal temperature in the range of 100 to 150 degrees centigrade {[P7]}.
Regarding claims 9 and 18, STOVER discloses wherein the thermoplastic heat-moldable foam blank is comprised at least in part of ethylene vinyl acetate {[P4]}.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 6 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over STOVER.
Regarding claims 6 and 15, STOVER discloses all the limitations of claims 1 and 10 as disclosed above. However, regarding claims 6 and 15 limitation of “wherein the step of heating the thermoplastic heat-moldable foam blank heats the foam blank to an internal temperature in the range of 130 to 140 degrees centigrade”, STOVER discloses a temperature range of 115-120 degree centigrade or Celsius {[P7]}, that is close to the claimed ranged.
A prima facie case of obviousness is established when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same [or similar] properties. Peterson, 315 F.3d at 1329, citing Titanium Metals Corp. v. Banner, 778 F.2d at 783, MPEP 2131.03 (III)
Claims 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over STOVER as applied to claims 1 and 10 above, and further in view of ROBINSON (US 4,362,003), hereinafter ROBINSON.
Regarding claims 7 and 16, STOVER discloses all the limitations of claims 1 and 10 as disclosed above. STOVER, however, is silent on securing the heated foam by a gullet strap to the saddle before placing it on the horse or the limitation “wherein prior to placing the heated thermoplastic heat-moldable foam blank on the back of the equine the heated thermoplastic heat-moldable foam blank is attached to an underside of the saddle by a gullet strap that pulls the heated thermoplastic heat-moldable foam blank toward the underside of the saddle and into a channel of the saddle, and then the assembled saddle, heated thermoplastic heat-moldable foam blank and gullet strap are placed on the back of the equine”.
In the same filed of endeavor that is related to saddle and saddle pad, ROBINSON discloses that the saddle pad is connected to the saddle via a gullet strap {[C2, L55-60], [FIG. 3] note gullet strap 12 secures all the pads}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the gullet strap of ROBINSON in the method of STOVER and have secured the heated foam of STOVER to the saddle of STOVER before placing the combination on the horse’s back. As disclosed by ROBONSON, this strap ensures securing the pad to the saddle {[FIG. 3]} and thus in case of STOVER ensures proper deformation of the foam blank to the shape of the underside of the saddle.
Claims 8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over STOVER as applied to claims 1 and 10 above, and further in view of BRADEN (US-2009/0031679), hereinafter BRADEN.
Regarding claims 8 and 17, STOVER discloses all the limitations of claims 1 and 10 as disclosed above. STOVER, however, is silent on that the thermoplastic heat-moldable foam blank is provided with ventilation holes position toward a saddle tree of the saddle.
In the same field of endeavor that is related saddle pad, BRADEN discloses wherein the thermoplastic heat-moldable foam blank is provided with ventilation holes position toward a saddle tree of the saddle {[0034], [0037], [FIG. 3] note perforations 20 are toward the saddle or saddle tree}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of BRADEN in the method of STOVER and have included holes or perforations in the pad of STOVER. As disclosed by BRADEN, the advantage of these holes or perforations is that it allows circulation of air in order to cool the horse’s skin {[0034], [0037]}.
Claims 1, 5-6, 9-10, 14-15, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over MEIER (DE-102006039777-A1 and its English translation), hereinafter MEIER, in view of STOVER. Note that the italicized text below are the instant claims.
Regarding claims 1, 9-10, and 18 (note that additional claim 1 limitations are in parenthesis), MEIER discloses A method for forming a saddle pad for an equine {[abstract]}, comprising:
a. heating (a flat blank of) a heat-moldable (of uniform thickness having a desired perimeter shape for a saddle pad) to an internal temperature whereat the heated heat-moldable when placed into a three-dimensional contoured shape will maintain that contoured shape after the heated heat-moldable has cooled {[P1, last ¶]-[P2, 1st ¶], [FIGs. 1-3] note desired perimeter shape, uniform thickness and flat blank}.
MEIER, however, is silent on the material of construction of saddle pad being a thermoplastic foam (claims 1 and 10) and that the thermoplastic heat-moldable foam blank is comprised at least in part of ethylene vinyl acetate (claims 9 and 18).
In the same filed of endeavor that is related to forming saddle pad, STOVER discloses a thermoplastic foam that is partly made of ethylene vinyl acetate {[abstract], [P1] note foam, [P2] note rider sitting on the saddle, [P4] note PE/EVA are thermoplastic}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have substituted the generic or undisclosed saddle pad of MEIER with the thermoplastic foam of STOVER made of EVA, since it has been held that a simple substitution of one known element for another to obtain predictable results is obvious {MPEP 2143 (I)(B)}. Predictable results are achieved because both arts are in the same filed of endeavor and they both use a thermoformable pad that is heated and shaped.
Regarding the remainder limitation of claims 1 and 10, modified MEIER discloses b. placing the heated thermoplastic heat-moldable foam on the back of the equine at a location below where a saddle will be positioned on the back of the equine {[P1, last ¶]-[P2, 1st ¶]};
c. placing the saddle atop the heated thermoplastic heat-moldable foam on the back of the equine to at least partially contour the heated thermoplastic heat-moldable foam to the shape of the back of the equine thereunder and the shape of the underside of the saddle thereover {[P1, last ¶]-[P2, 1st ¶]}; and
d. placing a weight on the saddle to further contour the heated thermoplastic heat-moldable foam to the shape of the back of the equine thereunder and the shape of the underside of the saddle thereover and not removing the weight until the heated foam blank cools sufficiently to maintain that contoured shape after the heated thermoplastic heat-moldable foam has cooled {[P1 last ¶]-[P2, 1st ¶] note the rider is the weight}.
Regarding claims 5 and 14, MEIER discloses wherein the step of heating the thermoplastic heat-moldable foam blank heats the foam blank to an internal temperature in the range of 100 to 150 degrees centigrade {[P1, last ¶]}.
Regarding claims 6 and 15, MEIER discloses wherein the step of heating the thermoplastic heat-moldable foam blank heats the foam blank to an internal temperature in the range of 130 to 140 degrees centigrade {[P1, last ¶]}.
The Examiner notes that MEIER discloses a temperature of 100 degree centigrade or Celsius {[P1, last ¶]}, that is close to the claimed ranged.
A prima facie case of obviousness is established when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same [or similar] properties. Peterson, 315 F.3d at 1329, citing Titanium Metals Corp. v. Banner, 778 F.2d at 783, MPEP 2131.03 (III).
Claims 2 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over MEIER and STOVER as applied to claims 1 and 10 above, and further in view of GREGERSON (US-2004/0237474), hereinafter GREGERSON.
Regarding claims 2 and 11, combination of MEIER and STOVER discloses all the limitations of claims 1 and 10 as disclosed above. This combination, however, is silent on using two heating pads to heat the foam blank.
In the same field of endeavor that is related to heating by heating pads, GREGERSON discloses wherein the step of heating the thermoplastic heat-moldable foam blank includes placing the thermoplastic heat-moldable foam blank between two heating pads {[0070] note that the foam blank is disclosed by the combination of MEIER and STOVER as discussed above}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teaching of GREGERSON in the combination method of MEIER and STOVER and have heated the foam blank by sandwiching them between two heating pads. As disclosed by GREGERSON, this method of heating result in a uniform heating of all the intended regions to the heating temperature {[0070]}.
Claims 3-4 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over MEIER , STOVER, and GREGERSON as applied to claims 1-2 and 10-11 above, and further in view of HSI-WU (US-2005/0001100), hereinafter HSI-WU.
Regarding claims 3-4 and 12-13, combination of MEIER, STOVER, and GREGERSON discloses all the limitations of claims 1-2 and 10-11 as disclosed above. This combination, however, is silent on insulating the heating pads with an insulation layer and placing them in Kevlar mesh.
In the same field of endeavor HIS-WU discloses wherein during the heating of the thermoplastic heat-moldable thermoplastic heat-moldable foam blank, the two heating pads with the thermoplastic heat-moldable foam blank positioned therebetween are covered by an insulation layer (claims 3 and 12), wherein during the heating of the thermoplastic heat-moldable thermoplastic heat-moldable foam blank, the two heating pads with the thermoplastic heat-moldable foam blank positioned therebetween and covered by the insulation layer are positioned within a Kevlar outer mesh (claim 4 and 13) {[0033] note the insulation and Kevlar mesh, the Examiner also notes that it is known to insulate the heating pads, since the objective is to heat the foam blanks sandwiched between and therefore prevent loss of heat to the ambient}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teaching of HSI-WU in the combination method of MEIER, STOVER, and GREGERSON and have insulated the heating pads and placed them in a KEVLAR mesh. As disclosed by HSI-WU, this results in an increased strength of the assembly {[0033]}. The Examiner notes that since the combination method is performed in the field and where the horse is, increasing the strength of the heating assembly is desired.
Claims 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over MEIER and STOVER as applied to claims 1 and 10 above, and further in view of ROBINSON (US 4,362,003), hereinafter ROBINSON.
Regarding claims 7 and 16, combination of MEIER and STOVER discloses all the limitations of claims 1 and 10 as disclosed above. This combination, however, is silent on securing the heated foam by a gullet strap to the saddle before placing it on the horse or the limitation “wherein prior to placing the heated thermoplastic heat-moldable foam blank on the back of the equine the heated thermoplastic heat-moldable foam blank is attached to an underside of the saddle by a gullet strap that pulls the heated thermoplastic heat-moldable foam blank toward the underside of the saddle and into a channel of the saddle, and then the assembled saddle, heated thermoplastic heat-moldable foam blank and gullet strap are placed on the back of the equine”.
In the same filed of endeavor that is related to saddle and saddle pad, ROBINSON disclose that the saddle pad is connected to the saddle via a gullet strap {[C2, L55-60], [FIG. 3] note gullet strap 12 secures all the pads}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the gullet strap of ROBINSON in the combination method of MEIER and STOVER and have secured the heated foam of to the saddle of before placing the saddle/saddle pad on the horse’s back. As disclosed by ROBONSON, this strap ensures securing the pad to the saddle {[FIG. 3]} and thus in case of combination of MEIER and STOVER ensures proper deformation of the foam blank to the shaped of the underside of the saddle.
Claims 8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over MEIER and STOVER as applied to claims 1 and 10 above, and further in view of BRADEN (US-2009/0031679), hereinafter BRADEN.
Regarding claims 8 and 17, combination of MEIER and STOVER discloses all the limitations of claims 1 and 10 as disclosed above. This combination, however, is silent on that the thermoplastic heat-moldable foam blank is provided with ventilation holes position toward a saddle tree of the saddle.
In the same field of endeavor that is related saddle pad, BRADEN discloses wherein the thermoplastic heat-moldable foam blank is provided with ventilation holes position toward a saddle tree of the saddle {[0034], [0037], [FIG. 3] note perforations 20 are toward the saddle or saddle tree}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of BRADEN in the method of MEIER and STOVER and have included holes or perforations in the pad of this combination. As disclosed by BRADEN, the advantage of these holes or perforations is that it allows circulation of air in order to cool the horse’s skin {[0034], [0037]}.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00.
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/S. BEHROOZ GHORISHI/Primary Examiner, Art Unit 1748