Ex Parte Odermatt et al

Patent Trial and Appeal Board

Feb 28, 2014

12395796 (P.T.A.B. Feb. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/395,796 03/02/2009 Hugo Odermatt ST-83343 5061
24131 7590 03/03/2014
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
NGUYEN, SON T
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
03/03/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HUGO ODERMATT, FRANK STUBBEN and
RALPH STUBBEN
____________

Appeal 2012-004267
Application 12/395,796
Technology Center 3600
____________

Before EDWARD A. BROWN, MICHAEL L. HOELTER and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/395,796

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STATEMENT OF THE CASE
Hugo Odermatt et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting under 35 U.S.C. § 112, first
paragraph, claims 3, 4, 11-14, 16, 17 and 19-24, for lack of written
description;1 under 35 U.S.C. § 112, second paragraph, claims 3, 4, 11-14,
16, 17 and 19-24, for indefiniteness;2 and under 35 U.S.C. § 103(a): (1)
claims 3, 4, 11-14, 21 and 22 as unpatentable over Frey3 (DE 3236079 A1;
pub. Apr. 21, 1983); (2) claims 16 and 24 as unpatentable over Frey and
Marshall (US 5,187,924; iss. Feb. 23, 1993); (3) claims 17 and 23 as
unpatentable over Frey and DeCosemo (US 2006/0117720 A1; pub. Jun. 8,
2006); and (4) claims 19 and 20 as unpatentable over Frey and Coffin (US
6,044,630; iss. Apr. 4, 2000). Claims 1, 2, 5-10, 15 and 18 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was
conducted on February 18, 2014.
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter “relates to seat padding of a riding
saddle.” Spec. para. [0003]; figs. 1-2.
Claim 21, the sole independent claim, is illustrative of the claimed
subject matter and recites:

1 The Examiner included claim 7 in this ground of rejection. We note that
claim 7 has been canceled.
2 The Examiner included claim 7 in this ground of rejection. We note that
claim 7 has been canceled.
3 We derive our understanding of this reference in part from a machine
translation by esp@cenet®, mailed February 3, 2011, which is available in
the electronic file wrapper of the underlying application. All references to
the text of Frey are to portions of the translation.
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21. A riding saddle, comprising:
a saddle structure defining a center of the saddle in
a longitudinal direction;
two substantially separate pads integrally formed
on said saddle structure at a spacing distance from one
another to form a seat padding with two padded
elevations in a supporting region for a rider’s posterior;
a planar depression formed between said pads, said
depression extending substantially along the center of the
saddle and having a width of at least 2 cm, and said
padded elevations straddling said depression and
projecting above said depression;
said elevations and said depression forming a
support surface for the rider and causing a rider’s coccyx
to be relieved from load during riding by padding the
rider’s ischial protuberances more greatly than the rider’s
coccyx, with a surface of said elevations having a
substantially constant height, dropping away toward an
outer contour thereof, and having a rounded outer
contour matched to a shape of the saddle.

ANALYSIS
Written Description

The Notice of Appeal (filed May 3, 2011) states, “Applicant hereby
appeals to the Board of Patent Appeals and Interferences [now the Patent
Trial and Appeal Board] from the last decision of the examiner.” In the
Final Rejection, the Examiner rejected claims 3, 4, 11-14, 16, 17 and 19-24
under 35 U.S.C. § 112, first paragraph, for lack of written description. Final
Rej. 2 (mailed February 3, 2011). The Examiner found that in claim 21, “the
limitation of ‘[the depression having] a width of at least 2 cm’ is not
described in the specification and is considered new matter.” Id. However,
we note that the Specification describes that “[t]he depression runs in the
longitudinal direction approximately in the center of the saddle and
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preferably has a width of at least 2 cm.” Spec. para. [0008].
There is no indication in the record before us, however, that the
Examiner has withdrawn this expressed rejection. See Interview Summary
(mailed April 15, 2011). Appellants do not address this rejection in the
Appeal Brief (filed July 13, 2011) or the Reply Brief (filed December 20,
2011). See App. Br. and Reply Br., generally.
Accordingly, we are constrained to summarily sustain the Examiner’s
rejection of claims 3, 4, 11-14, 16, 17 and 19-24 under 35 U.S.C. § 112, first
paragraph, for lack of written description. See Ex Parte Ghuman, 88
USPQ2d 1478, 1480 (BPAI 2008)(precedential).

Indefiniteness

In the Final Rejection, the Examiner also rejected claims 3, 4, 11-14,
16, 17 and 19-24 under 35 U.S.C. § 112, second paragraph, for
indefiniteness. Final Rej. 3. The Examiner found that in claim 21, “the
limitation of ‘[a surface of the elevations] dropping away toward an outer
contour thereof’ is unclear as to what applicant mean[s] by dropping away.”
Id. However, we note that the Specification describes that “[t]he elevations
5, 6 merge gently into the basic saddle surface 2 in their edge regions 8. The
elevations 5, 6 are approximately kidney-shaped and their outer contour 11
is rounded inward and matched to the shape of the saddle 1 in the outer
region thereof.” Spec. para [0018]. Moreover, we note that Figure 2 of the
drawings illustrates that a surface of the elevations 5, 6 “drop[s] away
toward an outer contour thereof.”
Appellants do not address this rejection in the Appeal Brief or the
Reply Brief. See App. Br. and Reply Br., generally.
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Accordingly, we are constrained to summarily sustain the Examiner’s
rejection of claims 3, 4, 11-14, 16, 17 and 19-24 under 35 U.S.C. § 112,
second paragraph, for indefiniteness. See Ex Parte Ghuman, 88 BPAI at
1480.
Obviousness over Frey - Claims 3, 4, 11-14, 21 and 22
Appellants do not present additional arguments for dependent claims
3, 4, 11-14 and 22 separate from those directed against the rejection of
independent claim 21. App. Br. 5-11. Accordingly, Appellants have argued
claims 3, 4, 11-14, 21 and 22 as a group for purposes of the rejection of
those claims under § 103(a). Claim 21 is representative of the group and is
selected for review, with claims 3, 4, 11-14 and 22 standing or falling with
claim 21. See 37 C.F.R. § 41.37(c)(1)(vii)(2011).
Independent claim 21 calls for a riding saddle including elevations
and a depression “forming a support surface for the rider and causing a
rider’s coccyx to be relieved from load during riding by padding the rider’s
ischial protuberances more greatly than the rider’s coccyx.” App. Br. 16,
Clms. App’x. The Examiner found that Frey teaches all the limitations of
claim 21, “[h]owever, Frey is silent about the depression having a width of
at least 2 cm.” Ans. 5. The Examiner concluded that
[i]t would have been obvious to one having
ordinary skill in the art at the time the invention
was made to have the depression of Frey with a
width of at least 2 cm, 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.

Id. Appellants do not contest these findings or the conclusion of
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obviousness. See App. Br., generally. The Examiner further found that
Frey teaches the depression 24, which can function
(together with the pads) to form a support surface
for the rider and causing a rider’s coccyx to be
relieved from load during riding by padding the
rider’s ischial protuberances more greatly than the
rider’s coccyx. In addition . . . depending on the
rider’s size, the depression would be in the area of
the rider’s coccyx, thus, serving to relieve the load.
Moreover, the discussion regarding reverse
orientation of the user using Frey’s saddle was to
demonstrate to [Appellants] that in addition to the
above teaching of Frey, a rider can sit backward or
in reverse orientation and his/her coccyx would be
in the area of the depression. It is well known that
a rider can sit backward on a saddle, thus, would
result in his/her coccyx being in the area of the
depression of Frey. The main point is that Frey’s
depression [24] (together with his pads) is
certainly capable of performing the function of
forming a support surface for the rider and causing
a rider’s coccyx to be relieved from load during
riding by padding the rider’s ischial protuberances
more greatly than the rider’s coccyx, as claimed by
[Appellants’] invention.
Ans. 11.
Appellants contend that “Frey is not concerned with padding the seat
(i.e., to protect the ischial protuberances or the coccyx),” as required by
claim 21. App. Br. 8. Appellants further contend that a rider using Frey’s
saddle would not sit on the saddle backwards (i.e., reverse the orientation of
a saddle), as suggested by the Examiner. Id. at 9-10. In particular,
Appellants contend that
First, one of skill in the pertinent art would
understand how a rider is to be seated on the
illustrated saddle [of Frey]. The reversed rider
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now would have no backward hold, as the seating
falls off towards the “back.” Further, the seatback
(cf. reference numeral 2 [of Frey]) would now
come to impact the rider’s [crotch]. This is exactly
what Frey is attempting to avoid and “Italian style
riding” would be impossible with the “modified”
saddle.
Second, by reversing the rider, the Frey
saddle would become unsuitable for its intended
purpose. . . . The explicit teaching of Frey is to
prevent extraneous impact on the central [crotch]
by loading the adjacent thigh regions more
strongly. This function would be entirely lost in
the “reversed” riding saddle.

Id; see also Reply Br. 1-2.

Appellants’ contentions are not persuasive as claim 21 does not
express any particular riding position (i.e., frontwards or backwards). The
relevant question regarding claim 21 is not whether the prior art device
would be the most suitable for performing the claimed function, but whether
the prior art device would be capable of performing the claimed function.
Where the Patent and Trademark Office has reason to believe that a claimed
functional limitation is an inherent characteristic of the prior art, the burden
is shifted to Appellants to show that the prior art does not possess that
characteristic. See In re Spada, 911 F.2d 705,708 (Fed. Cir. 1990) (quoting
In re King, 801 F.2d 1324, 1327 (Fed.Cir. 1986)), see also In re Best, 562
F.2d 1252, 1254-55 (CCPA 1977); (“when the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.”). It is well
established that claims directed to an apparatus must be distinguished from
the prior art in terms of structure rather than function. See, e.g., In re
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Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). In order to satisfy the
functional limitations in an apparatus claim, the prior art apparatus must be
capable of performing the claimed function. Id. at 1478. Thus, a prior art
reference need not envision the device being actually used to perform the
claimed function. Here, although Frey does not explicitly disclose the use of
its riding saddle for providing differential support of the ischial
protuberances and the coccyx of the rider, the absence of disclosure in Frey
relating to this use or function is not dispositive. Rather, “[i]t is well settled
that the recitation of a new intended use for an old product does not make a
claim to that old product patentable.” Id. at 1477 (citation omitted).
Further, Appellants have not provided any persuasive argument or
evidence to establish that Frey’s riding saddle is incapable of forming a
support surface for the rider and causing a rider’s coccyx to be relieved from
load during riding by padding the rider’s ischial protuberances more greatly
than the rider’s coccyx. To the contrary, Appellants acknowledge that there
are differential loading/support features disclosed in both the Frey reference
and the subject invention (“Frey relieves stress on the central [crotch] by
loading the neighboring thigh regions more strongly. [Appellants] relieve
stress on the coccyx by loading the neighboring ischial protuberances more
strongly.”). App. Br. 8.
Frey discloses
[a] riding saddle or a riding saddle seat covering
(22) has in the region of the perineum4,5 of the rider

4 An ordinary and customary meaning of the term “perineum” is “1. Surface
area between the thighs extending from the coccyx to the pubis that includes
the anus posteriorly and the external genitalia anteriorly.”
http://www.medilexicon.com/medicaldictionary.php?t=67097 (last visited
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a relative depression formed by longitudinally
running enlargements (32) on both sides and/or a
cutout (24), the perineum of the rider remaining
fully or partially protected against stresses. As a
result, long-lasting and shock-like stresses on the
perineum are avoided, such as can, in particular in
the case of rides of long duration or high jumps,
lead to damage to health.

Frey, Abstract; figs. 2-3. The perineum region includes the coccyx and the
ischial tuberosities (protuberances). See footnotes 3 and 4. In our view, it is
reasonable that the enlargements (elevations) 32 and cutout (depression) 24
of Frey could form a support surface for a rider, thereby causing the rider’s
coccyx to be relieved from load during riding by padding the rider’s ischial
tuberosities (protuberances) more greatly than the rider’s coccyx (i.e., a
rider’s coccyx would be positioned in the region above depression 24 of
Frey during riding and would therefore be subjected to less load).
Moreover, Appellants acknowledge, in general, that persons can (and do at
times) sit backwards on saddles and do not persuasively argue that Frey’s
saddle could not be used in such a manner. See Reply Br. 2. An attorney’s
arguments in a brief cannot take the place of evidence. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974).
Accordingly, for the foregoing reasons, the Examiner’s rejection of
claim 21 and claims 3, 4, 11-14 and 22, which fall with claim 21, as

February 26, 2014).
5 The Boundaries of the Perineum include: Anteriorly: Pubic symphysis;
Posteriorly: Inferior sacrum and coccyx; Anterolaterally: Ischiopubic rami;
Laterally: Ischial Tuberosities [Protuberances]; Posterolaterally:
Sacrotuberous ligaments.
http://www.netteranatomy.com/anatomylab/subregions.cfm?subregionID=R
57 (emphasis added) (last visited February 26, 2014).
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unpatentable over Frey is sustained.
Obviousness over Frey and either Marshall, DeCosemo or Coffin - Claims
16, 17, 19, 20, 23 and 24
Regarding the rejections of claims 16, 17, 19, 20, 23 and 24,
Appellants assert that the teachings of Marshall, DeCosemo and Coffin do
not “make up for the shortcomings of the primary reference [i.e., Frey].”
See App. Br. 11-12. Because we find no deficiency in the Frey reference
with respect to independent claim 21 for the reasons discussed above, we
also sustain the Examiner’s rejection of (1) claims 16 and 24 as unpatentable
over Frey and Marshall; (2) claims 17 and 23 as unpatentable over Frey and
DeCosemo; and (3) claims 19 and 20 as unpatentable over Frey and Coffin.

DECISION
We AFFIRM the decision of the Examiner to reject claims 3, 4, 11-
14, 16, 17 and 19-24 for lack of written description.
We AFFIRM the decision of the Examiner to reject claims 3, 4, 11-
14, 16, 17 and 19-24 for indefiniteness.
We AFFIRM the decision of the Examiner to reject claims 3, 4, 11-
14, 21 and 22 as unpatentable over Frey.
We AFFIRM the decision of the Examiner to reject claims 16 and 24
as unpatentable over Frey and Marshall.
We AFFIRM the decision of the Examiner to reject claims 17 and 23
as unpatentable over Frey and DeCosemo.
We AFFIRM the decision of the Examiner to reject claims 19 and 20
as unpatentable over Frey and Coffin.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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