DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
As per the submission to the Office filed on 07/02/2026, the following represents the changes from the previous claims: Claims 1-2, 9-10, 16, 21 were amended, claim 8 was canceled. Claims 1-7, 9-23 are presented for examination.
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.
Claim 21 is 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 21, the limitations “inserted into the pocket” and “alters load distribution” in line 6 are unclear because is it referring to a different insertion of the correction member into the pocket than what was stated in line 2 and a different load distribution than what was stated in line 1? For examination purposes, the limitation will be treated as the same insertion of the correction member into the pocket and load distribution and it is recommended that “said” be inserted before “inserted into the pocket” and “the” be inserted before “load distribution” in claim 21.
Also, for claim 21, the limitation “when inserted into the pocket” is unclear as to what is being inserted into the pocket. For examination purposes, “when inserted into the pocket” will be interpreted as the correction member being inserted into the pocket.
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.
Claims 1-2, 6-7, 9-10, 14-15 and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over VENTURA (EP 1359116 A1 as cited in IDS) in view of GOLLAN (AU 2008202932 A1).
Regarding claim 1, VENTURA teaches a saddle comprising a saddle tree (tree shown in fig. 1) having a lateral slot (20 in figs. 1-2 where 20 is located on a lateral side of the saddle tree, and is therefore considered to constitute a lateral slot) that extends substantially perpendicular to a longitudinal centerline of the saddle tree (see examiner’s illustration of fig. 1 as the top and bottom portion of the lateral slot 20 extends substantially perpendicular to the longitudinal centerline of the saddle tree) and is positioned towards a rear edge (fig. 2 depicts slot 20 to be oriented in a way that is pointing towards a rear edge of the saddle tree) thereof, a seat (13 and 21 and see machine translation “Platform 13 and single part 21 substantially form the seat on which the riders sits”) supported by the saddle tree (figs. 5, 7 and 9), and a pocket (as the space between the warped bars 1 of the saddle tree and the top seat of 13 and 21 create a pocket as shown in figs. 6-9 and please see examiner’s illustration of fig. 9) between the saddle tree and the seat (please see examiner’s illustration of fig. 9) that is in communication with the lateral slot (fig. 1 and 9 depicts the space of the pocket to be in communication with the lateral slot); wherein the saddle further comprises a substantially planar correction member (22 fig. 5) inserted through the lateral slot (fig. 9) and positioned under the seat (fig. 9 depicts the substantially planar correction member 22 to be positioned under the seat 21).
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However, VENTURA does not explicitly state wherein the correction member is inserted through the lateral slot into the pocket.
GOLLAN teaches wherein the correction member (10) is inserted through the lateral slot (35) into the pocket (41 and figs. 5-6).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the saddle of VENTURA to include wherein the correction member is inserted through the lateral slot into the pocket as taught by GOLLAN in order to securely retain the correction member when placed in the pocket (see machine translation “there is provided an internal pocket for retention of the pommel part or front end of the saddle tree and” of GOLLAN).
Regarding claim 2, VENTURA as modified by GOLLAN teaches the saddle as claimed in claim 1 and VENTURA further teaches wherein the correction member has a form of a paddle (figs. 5-6 depict the correction member in the form of a paddle).
Regarding claim 6, VENTURA as modified by GOLLAN teaches the saddle as claimed in claim 1 and VENTURA further teaches the substantially planar correction member (fig. 5).
However, VENTURA as modified by GOLLAN is silent about a thickness of from 1 mm to 6 mm, from 1.5 mm to 5 mm, from 2 mm to 4 mm, or about 3 mm.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the thickness of the correction member of VENTURA as modified by GOLLAN to be of from 1 mm to 6 mm, from 1.5 mm to 5 mm, from 2 mm to 4 mm, or about 3 mm based on the user’s preference for comfort, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 7, VENTURA as modified by GOLLAN teaches the saddle as claimed in claim 1 and VENTURA further teaches wherein the correction member is formed of a plurality of correction member elements (figs. 5-6 as there are a plurality of correction member elements).
Regarding claim 9, VENTURA teaches a saddle seat comprising a saddle tree (tree shown in fig. 1) and a seat component (13 and 21 and see machine translation “Platform 13 and single part 21 substantially form the seat on which the riders sits”), wherein a pocket (as the space between the warped bars 1 of the saddle tree and the top seat of 13 and 21 create a pocket as shown in figs. 6-9 and please see examiner’s illustration of fig. 9) is formed between the saddle tree and the seat component (please see examiner’s illustration of fig. 9), the saddle tree includes a lateral slot (20) that extends substantially perpendicular to a longitudinal centerline of the saddle tree (see examiner’s illustration of fig. 1 as the top and bottom portion of the lateral slot 20 extends substantially perpendicular to the longitudinal centerline of the saddle tree), is positioned towards a rear edge of the saddle tree (fig. 2 depicts slot 20 to be oriented in a way that is pointing towards a rear edge of the saddle tree), and is in communication with the lateral slot (fig. 1 and 9 depicts the space of the pocket to be in communication with the lateral slot), and a substantially planar correction member (22) that is at least partially located through the lateral slot (fig. 9) and under the seat component (fig. 9 depicts the substantially planar correction member 22 to be positioned under the seat component 21).
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However, VENTURA does not explicitly state wherein the correction member is at least partially located through the lateral slot into the pocket.
GOLLAN teaches wherein the correction member (10) is at least partially located through the lateral slot (35) into the pocket (41 and figs. 5-6).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the saddle seat of VENTURA to include wherein the correction member is at least partially located through the lateral slot into the pocket as taught by GOLLAN in order to securely retain the correction member when placed in the pocket (see machine translation “there is provided an internal pocket for retention of the pommel part or front end of the saddle tree and” of GOLLAN).
Regarding claim 10, VENTURA as modified by GOLLAN teaches the saddle seat as claimed in claim 9 and VENTURA further teaches wherein the correction member has a form of a paddle (figs. 5-6 depict the correction member in the form of a paddle).
Regarding claim 14, VENTURA as modified by GOLLAN teaches the saddle seat as claimed in claim 9, and VENTURA further teaches wherein the correction member is substantially planar (fig. 5).
However, VENTURA as modified by GOLLAN is silent about a thickness of from 1 mm to 6 mm, from 1.5 mm to 5 mm, from 2 mm to 4 mm, or about 3 mm.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the thickness of the correction member of VENTURA as modified by GOLLAN to be of from 1 mm to 6 mm, from 1.5 mm to 5 mm, from 2 mm to 4 mm, or about 3 mm based on the user’s preference for comfort, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 15, VENTURA as modified by GOLLAN teaches the saddle seat as claimed in claim 9 and VENTURA further teaches wherein the correction member is formed of a plurality of correction member elements (figs. 5-6 as there are a plurality of correction member elements).
Regarding claim 22, VENTURA as modified by GOLLAN the saddle as claimed in claim 1, but is silent wherein the pocket is formed of a synthetic fibrous material.
GOLLAN teaches wherein the pocket is formed of a synthetic fibrous material (see machine translation “The saddle coverings are formed from a composite sheet material composed of a cloth covered foam.” as it is known that composite sheets are synthetic fibrous material).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the pocket of VENTURA as modified by GOLLAN to be formed of a synthetic fibrous material as taught by GOLLAN in order for the pocket to be formed of a durable material that will not tear easily as it is well known in the art, 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 design choice. In re Leshin, 125 USPQ 416.
Regarding claim 23, VENTURA as modified by GOLLAN teaches the saddle seat as claimed in claim 9, but is silent wherein the pocket is formed of a synthetic fibrous material.
GOLLAN teaches wherein the pocket is formed of a synthetic fibrous material (see machine translation “The saddle coverings are formed from a composite sheet material composed of a cloth covered foam.” as it is known that composite sheets are synthetic fibrous material).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the pocket of VENTURA as modified by GOLLAN to be formed of a synthetic fibrous material as taught by GOLLAN in order for the pocket to be formed of a durable material that will not tear easily as it is well known in the art, 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 design choice. In re Leshin, 125 USPQ 416.
Claims 3-5, 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over VENTURA as modified by GOLLAN as applied to claims 2 and 10 above, and further in view of GERGAUD (WO 2018065929 A1).
Regarding claim 3, VENTURA as modified by GOLLAN teaches the saddle as claimed in claim 2, and VENTURA further teaches wherein the paddle has an oval head (head shown in fig. 6) and a handle portion (fig. 9 and see machine translation “attachment means 22 comprise screws provided with their corresponding nuts so that the screws can move along the first and second slots 18, 20 to the desired position.” as the elongated portion of the screw will be the handle portion).
However, VENTURA as modified by GOLLAN is silent about wherein the paddle has a generally egg-shaped or ovoid head.
GERGAUD teaches wherein the paddle (5) has a generally egg-shaped or ovoid head (fig. 3).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the head of VENTURA as modified by GOLLAN to have a generally egg-shaped or ovoid head as taught by GERGAUD in order for the head to provide more support between the seat (figs. 1-2 of GERGAUD), 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).
Regarding claim 4, VENTURA as modified by GOLLAN and GERGAUD teaches the saddle as claimed in claim 3, and VENTURA further teaches wherein the handle portion is adjustable for length (see machine translation “attachment means 22 comprise screws provided with their corresponding nuts so that the screws can move along the first and second slots 18, 20 to the desired position. By tightening the nuts on the corresponding screws platform 13 is urged to deform so that the minimum height point of the top part of platform 13 can be adjusted according to the chosen position”).
Regarding claim 5, VENTURA as modified by GOLLAN and GERGAUD teaches the saddle as claimed in claim 4, and VENTURA further teaches wherein the handle portion is adjustable for length by means of a series of features (see machine translation “attachment means 22 comprise screws provided with their corresponding nuts so that the screws can move along the first and second slots 18, 20 to the desired position. By tightening the nuts on the corresponding screws platform 13 is urged to deform so that the minimum height point of the top part of platform 13 can be adjusted according to the chosen position”).
However, VENTURA as modified by GOLLAN and GERGAUD is silent about frangible features.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the material of the handle portion of VENTURA as modified by GOLLAN and GERGAUD to be frangible features in order to make it easier for the user to adjust the handle portion without the use of a tool and prevent the users from pinching their fingers when adjusting the length of the handle, 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 design choice. In re Leshin, 125 USPQ 416.
Regarding claim 11, VENTURA as modified by GOLLAN teaches the saddle seat as claimed in claim 10, and VENTURA further teaches wherein the paddle has an oval head (head shown in fig. 6) and a handle portion (fig. 9 and see machine translation “attachment means 22 comprise screws provided with their corresponding nuts so that the screws can move along the first and second slots 18, 20 to the desired position.” as the elongated portion of the screw will be the handle portion).
However, VENTURA as modified by GOLLAN is silent about wherein the paddle has a generally egg-shaped or ovoid head.
GERGAUD teaches wherein the paddle (5) has a generally egg-shaped or ovoid head (fig. 3).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the head of VENTURA as modified by GOLLAN to have a generally egg-shaped or ovoid head as taught by GERGAUD in order for the head to provide more support between the seat (figs. 1-2), 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).
Regarding claim 12, VENTURA as modified by GOLLAN and GERGAUD the saddle seat as claimed in claim 11 and VENTURA further teaches wherein the handle portion is adjustable for length (see machine translation “attachment means 22 comprise screws provided with their corresponding nuts so that the screws can move along the first and second slots 18, 20 to the desired position. By tightening the nuts on the corresponding screws platform 13 is urged to deform so that the minimum height point of the top part of platform 13 can be adjusted according to the chosen position”).
Regarding claim 13, VENTURA as modified by GOLLAN and GERGAUD teaches the saddle seat as claimed in claim 12 and VENTURA further teaches wherein the handle portion is adjustable for length by means of a series of features (see machine translation “attachment means 22 comprise screws provided with their corresponding nuts so that the screws can move along the first and second slots 18, 20 to the desired position. By tightening the nuts on the corresponding screws platform 13 is urged to deform so that the minimum height point of the top part of platform 13 can be adjusted according to the chosen position”).
However, VENTURA as modified by GOLLAN and GERGAUD is silent about frangible features.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the material of the handle portion of VENTURA as modified by GOLLAN and GERGAUD to be frangible features in order to make it easier for the user to adjust the handle portion without the use of a tool and prevent the users from pinching their fingers when adjusting the length of the handle, 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 design choice. In re Leshin, 125 USPQ 416.
Claims 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over VENTURA in view of GERGAUD and GOLLAN.
Regarding claim 16, VENTURA teaches a correction member (22) for a saddle seat (tree shown in fig. 1 and 13 and 21 and see machine translation “Platform 13 and single part 21 substantially form the seat on which the riders sits”), the correction member being substantially planar (figs. 5-6), having a form of a paddle (figs. 5-6 depict the correction member in the form of a paddle), wherein the paddle has an oval head (head shown in fig. 6) and a handle portion (fig. 9 and see machine translation “attachment means 22 comprise screws provided with their corresponding nuts so that the screws can move along the first and second slots 18, 20 to the desired position.” as the elongated portion of the screw will be the handle portion), a pocket (the pocket is defined as the space between the warped bars 1 of the saddle tree and the top seat of 13 and 21 create a pocket as shown in figs. 6-9 and please see examiner’s illustration of fig. 9) formed under at least one side of the saddle seat (please see examiner’s illustration of fig. 9 as the pocket is underneath the side of 21).
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However, VENTURA is silent about wherein the paddle has a generally egg-shaped or ovoid head, wherein the head is insertable into the pocket.
GERGAUD teaches wherein the paddle (5) has a generally egg-shaped or ovoid head (fig. 3).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the head of VENTURA to have a generally egg-shaped or ovoid head as taught by GERGAUD in order for the head to provide more support between the seat (figs. 1-2 of GERGAUD), 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).
GOLLAN teaches wherein the correction member (10) comprises of the head (rounded end of 10 in fig. 5) wherein the head is insertable into the pocket (41 and figs. 5-6).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the saddle seat of VENTURA to include wherein the head is insertable into the pocket as taught by GOLLAN in order to securely retain the correction member when placed in the pocket (see machine translation “there is provided an internal pocket for retention of the pommel part or front end of the saddle tree and” of GOLLAN).
Regarding claim 17, VENTURA as modified by GERGAUD and GOLLAN teaches the correction member as claimed in claim 16 and VENTURA further teaches wherein the handle portion is adjustable for length (see machine translation “attachment means 22 comprise screws provided with their corresponding nuts so that the screws can move along the first and second slots 18, 20 to the desired position. By tightening the nuts on the corresponding screws platform 13 is urged to deform so that the minimum height point of the top part of platform 13 can be adjusted according to the chosen position”).
Regarding claim 18, VENTURA as modified by GERGAUD and GOLLAN teaches the correction member as claimed in claim 17 and VENTURA further teaches wherein the handle portion is adjustable for length by means of a series of features (see machine translation “attachment means 22 comprise screws provided with their corresponding nuts so that the screws can move along the first and second slots 18, 20 to the desired position. By tightening the nuts on the corresponding screws platform 13 is urged to deform so that the minimum height point of the top part of platform 13 can be adjusted according to the chosen position”).
However, VENTURA as modified by GERGAUD and GOLLAN is silent about frangible features.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the material of the handle portion of VENTURA as modified by GERGAUD and GOLLAN to be frangible features in order to make it easier for the user to adjust the handle portion without the use of a tool and prevent the users from pinching their fingers when adjusting the length of the handle, 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 design choice. In re Leshin, 125 USPQ 416.
Regarding claim 19, VENTURA as modified by GERGAUD and GOLLAN teaches the correction member as claimed in claim 16, and VENTURA further teaches the correction member (fig. 5).
However, VENTURA as modified by GERGAUD and GOLLAN is silent about a thickness from 1 mm to 6 mm, from 1.5 mm to 5 mm, from 2 mm to 4 mm, or about 3 mm.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the thickness of the correction member of VENTURA as modified by GERGAUD and GOLLAN to be from 1 mm to 6 mm, from 1.5 mm to 5 mm, from 2 mm to 4 mm, or about 3 mm based on the user’s preference for comfort, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 20, VENTURA as modified by GERGAUD and GOLLAN teaches the correction member as claimed in claim 16, and VENTURA further teaches wherein the correction member is formed of a plurality of substantially planar correction member elements (figs. 5-6 as there are a plurality of correction member elements).
Regarding claim 21, VENTURA teaches a method of improving rider load distribution in a saddle (abstract as the saddle will withstand the weight of the rider without becoming deformed), the method comprising a step of inserting a correction member (22), a pocket (the pocket is defined as the space between the warped bars 1 of the saddle tree and the top seat of 13 and 21 create a pocket as shown in figs. 6-9 and please see examiner’s illustration of fig. 9) formed between a saddle tree (tree shown in fig. 1) and a seat (13 and 21 and see machine translation “Platform 13 and single part 21 substantially form the seat on which the riders sits” and please see examiner’s illustration of fig. 9) of the saddle; wherein the correction member is substantially planar (figs. 5-6), has a form of a paddle (figs. 5-6 depict the correction member in the form of a paddle), is generally an oval head (head shown in fig. 6) and a handle portion (fig. 9 and see machine translation “attachment means 22 comprise screws provided with their corresponding nuts so that the screws can move along the first and second slots 18, 20 to the desired position.” as the elongated portion of the screw will be the handle portion), and when inserted, alters load distribution across the seat of the saddle as compared to load distribution when the correction member is not inserted (see machine translation “attachment means 22 comprise screws provided with their corresponding nuts so that the screws can move along the first and second slots 18, 20 to the desired position. By tightening the nuts on the corresponding screws platform 13 is urged to deform so that the minimum height point of the top part of platform 13 can be adjusted according to the chosen position” as the correction member 22 is inserted and adjusted, and so the insertion of the correction member 22 will alter the load distribution across the seat of the saddle based on the adjustment of the correction member 22 as compared to load distribution when the correction member is not inserted).
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However, VENTURA is silent about inserting the correction member into the pocket; wherein the paddle is generally egg-shaped or ovoid head; and when inserted into the pocket.
GERGAUD teaches wherein the paddle (5) is generally egg-shaped or ovoid head (fig. 3).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the head of VENTURA to be generally egg-shaped or ovoid head as taught by GERGAUD in order for the head to provide more support between the seat (figs. 1-2 of GERGAUD), 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).
GOLLAN teaches wherein inserting the correction member (10) into the pocket (41 and figs. 5-6); and when inserted into the pocket (figs. 5-6 and see 112b above).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the correction member of VENTURA to include inserting the correction member into the pocket and when inserted into the pocket as taught by GOLLAN in order to securely retain the correction member when placed in the pocket (see machine translation “there is provided an internal pocket for retention of the pommel part or front end of the saddle tree and” of GOLLAN).
Response to Arguments
Applicant’s arguments filed on 07/02/2026 have been fully considered but they are not persuasive.
Applicant argues “Ventura does not disclose such a slot. Ventura's slot 20 is elongated in the longitudinal direction of the saddle tree and extends generally from front to rear, substantially parallel to the centerline of the saddle tree rather than substantially perpendicular thereto. Ventura expressly describes the slot as being arranged in the longitudinal direction. Ventura at paragraph [0009]. The corresponding figures likewise depict slot 20 extending substantially parallel to the longitudinal axis of the saddle tree. Id. at Figures 1, 3, 9, and 10. Moreover, Ventura discloses that slot 20 is arranged "on the central part of the [saddle] tree," not towards a rear edge of the saddle tree as required by the claims. Id. at paragraphs [0009] and [0016] and Figures 9 and 10.” and “Accordingly, both Ventura and Gollan disclose longitudinally-oriented slots rather than the claimed laterally-oriented slot extending substantially perpendicular to a longitudinal centerline of the saddle tree. Indeed, the elongate slots relied upon by the Office are oriented approximately ninety degrees from the orientation required by Applicant's pending claims.
The Office Action does not identify any disclosure in Ventura or Gollan of a slot extending substantially perpendicular to a longitudinal centerline of a saddle tree, nor does it provide any articulated reasoning why a person of ordinary skill in the art would have modified the longitudinally-oriented slots of Ventura and Gollan to arrive at Applicant's claimed configuration. Instead, the rejection relies upon an impermissible hindsight reconstruction of Applicant's invention.”.
The examiner respectively disagrees. Please see rejection above as VENTURA teaches the top and bottom open portion of the lateral slot 20 to extend substantially perpendicular to the longitudinal centerline of the saddle tree. Therefore, VENTURA still reads on the claim.
Applicant further argues “Gollan does not remedy these deficiencies. First, Gollan's elongate slot 35 is not formed in the saddle tree 10 at all. Rather, slot 35 is formed in the saddle 22 and serves as an opening through which saddle tree 10 is inserted into the saddle 22. Gollan at page 6, lines 6-9; Figures 5 and 7. Thus, Gollan does not disclose a saddle tree having the claimed slot.
Second, even if, arguendo, Gollan's slot 35 were considered to be in the saddle tree, it likewise fails to satisfy the amended claim language. As shown in Gollan Figures 5 and 7, slot 35 extends generally in a front-to-rear direction and is substantially parallel to the longitudinal centerline of the saddle. Gollan therefore discloses the same general slot orientation as Ventura, not a slot extending substantially perpendicular to a longitudinal centerline of the saddle tree.”.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues “Furthermore, Gollan's stated objectives are inconsistent with the modification proposed by the Office. Gollan explains that "the objective of the invention is to obtain a reduction in weight and increase in rigidity of both saddle tree 10 and saddle 22 which is especially suited for horse racing applications." Id at page 6, lines 16-18. Gollan therefore seeks to provide a lightweight, rigid saddle structure. By contrast, Applicant's invention employs a pocket configured to receive a substantially planar correction member inserted through a lateral slot, thereby permitting selective modification of saddle fit and load distribution. The Examiner's proposed modification would require introducing an additional correction member between the saddle tree and seat of Ventura based upon Gollan. However, adding an insertable correction member and an associated pocket would increase component count, weight, and structural complexity, contrary to Gollan's stated design objectives. At a minimum, Gollan provides no suggestion that its lightweight, rigid racing saddle should be modified to accommodate removable correction members positioned between the saddle tree and seat. To the contrary, Gollan's disclosure would have directed a person of ordinary skill in the art toward minimizing such additional structures.”.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues “As an initial matter, the Office appears to equate Ventura's attachment means 22 with Applicant's claimed correction member. Applicants respectfully disagree. Ventura's attachment means 22 are screws, nuts, and associated fastening hardware used to secure and adjust platform 13 relative to the saddle tree. Ventura at paragraphs [0016] and [0019]. These components function as structural fasteners and adjustment mechanisms rather than as removable correction members.”.
The examiner respectively disagrees. Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than functions. In re Danly, 120 USPQ 528, 531.
Applicant further argues “Ventura does not disclose, teach, or suggest any of these features. Ventura's attachment means 22 are not substantially planar, do not have a paddle form, do not include a generally egg- shaped or ovoid head and a handle portion, and are not inserted (or insertable) into a pocket formed between a saddle tree and a saddle seat. Nor are they configured to selectively alter rider load distribution through insertion into or removal from such a pocket. Rather, Ventura's attachment means merely secure structural components together and adjust the geometry of the platform.”.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In figs. 5-6, Ventura depicts the correction member 22 in the form of a substantially planar paddle, and Ventura teaches a handle portion as fig. 9 and machine translation states “attachment means 22 comprise screws provided with their corresponding nuts so that the screws can move along the first and second slots 18, 20 to the desired position.” as the elongated portion of the screw will be the handle portion. Also, Ventura teaches the correction member to alter the load distribution, see machine translation “attachment means 22 comprise screws provided with their corresponding nuts so that the screws can move along the first and second slots 18, 20 to the desired position. By tightening the nuts on the corresponding screws platform 13 is urged to deform so that the minimum height point of the top part of platform 13 can be adjusted according to the chosen position” as the correction member 22 is inserted and adjusted, and so the insertion of the correction member 22 will alter the load distribution across the seat of the saddle based on the adjustment of the correction member 22 as compared to load distribution when the correction member is not inserted.
Applicnat further argues “Gergaud similarly does not cure these deficiencies. Gergaud does not disclose a correction member having the specific paddle-shaped configuration now recited in claims 16 and 21, including a substantially planar body, a generally egg-shaped or ovoid head, and a handle portion.”.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant further argues “The Office Action asserts that it would have been obvious to modify Ventura's attachment means in view of Gergaud because "a mere change in size or shape of a component is generally recognized as being within the level of ordinary skill in the art." Office Action at page 9. However, Applicant's claims are not distinguished from the cited art merely by a change in size or shape.
As an initial matter, it is unclear precisely which portion of Ventura's attachment means the Office proposes modifying. Ventura's attachment means 22 comprise fastening hardware, including screws and nuts, used to secure platform 13 relative to the saddle tree. To the extent the Office is referring to the head of a screw associated with attachment means 22, modifying the shape of a screw head to be generally egg-shaped or ovoid would still not result in Applicant's claimed correction member.
Even if one were to modify the shape of a screw head as proposed by the Office, the resulting structure would remain a fastening component positioned within Ventura's attachment system. It would not become a substantially planar correction member having a paddle form, nor would it become a correction member that is insertable into a pocket formed under a saddle seat as required by claim 16.”.
Examiner respectfully disagrees. In figs. 5-6, VENTURA depicts the head portion of the correction member 22 in the form of a paddle, and so the paddle portion of the correction member 22 of VENTURA will be modified with GERGAUD to have a generally egg-shaped or ovoid head. It would have been obvious to one having ordinary skill in the art as VENTURA’s head is rounded, and so it would be reasonable for a person having ordinary skill in the art to modify size and shape of the head of the paddle of VENTURA with GERGAUD to teach a generally egg-shaped or ovoid head (fig. 3 of GERGAUD) in order for the head to provide more support between the seat (figs. 1-2 of GERGAUD).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues “Likewise, such a modified screw head would not render obvious claim 21, which requires a correction member that is inserted into a pocket formed between a saddle tree and a saddle seat and that alters rider load distribution when inserted. Ventura's attachment means 22 are not received within a pocket beneath a saddle seat. Instead, they function as structural attachment hardware positioned at the interface between platform 13 and the tree. Consequently, even accepting the Office's proposed modification, the resulting structure would still fail to satisfy the insertion and pocket limitations of claims 16 and 21.”.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues “Nor does Gergaud disclose or suggest the claimed paddle-shaped correction member. The Office appears to rely upon element 5 of Gergaud for the alleged teaching of the claimed head- and-handle configuration. However, element 5 of Gergaud is identified as a connecting bar and is not disclosed as a substantially planar correction member having a paddle form, a generally egg- shaped or ovoid head, and a handle portion. The Office Action does not explain how a connecting bar of Gergaud would be understood by a person of ordinary skill in the art to correspond to Applicant's claimed paddle-shaped correction member, nor does Gergaud disclose insertion of such a member into a pocket formed beneath a saddle seat.
Further, the Office Action does not identify any disclosure in Gergaud of a correction member inserted (or insertable) into a pocket formed between a saddle tree and a saddle seat as now expressly required by claims 16 and 21.”.
Examiner respectfully disagrees. GERGAUD is only relied upon to teach the structural components that VENTURA is silent about. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Also, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
All other claims with arguments are similarly unpersuasive as they relate to claim 1 and the art used for those claims were used for other features that are not claimed in claim 1.
Conclusion
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/SAHAR ALMATRAHI/Examiner, Art Unit 3643
/DAVID J PARSLEY/Primary Examiner, Art Unit 3643
