Ex Parte Ruiz Diaz

Patent Trial and Appeal Board

Feb 24, 2014

11674797 (P.T.A.B. Feb. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/674,797 02/14/2007 Pedro Ruiz Diaz 101141-48 5129
27387 7590 02/24/2014
LONDA, BRUCE S.
NORRIS MCLAUGHLIN & MARCUS, PA
875 THIRD AVE, 8TH FLOOR
NEW YORK, NY 10022
EXAMINER
NGUYEN, SON T
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
02/24/2014 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 PEDRO RUIZ DIAZ
____________________

Appeal 2012-004304
Application 11/674,797
Technology Center 3600
____________________

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

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/674,797

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STATEMENT OF THE CASE
Pedro Ruiz Diaz (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1, 5-13, and 21-24. App. Br. 3.1
Appellant’s representative presented oral argument on February 18, 2014.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claims 1 and 21 are independent. Claim 1 is illustrative and reads:
1. An adjustable saddle for equestrian use, of the type
having a tree with a seat, a head plate, a cover for providing
comfort and cushion for the rider and elongated pad members
forming a cushion between the saddle and a back of the equine,
and a plurality of inverted V-shaped rigid reinforcing members
each having the same uniform thickness but different angular
V-shapes, wherein one inverted V-shaped rigid reinforcing
member having one angular V-shape may be removed and
replaced by another one inverted V-shaped rigid reinforcing
member having a different angular V-shape, with the head plate
having a flexibility capable of permitting the head plate to
resiliently deform and accommodate to anyone of the rigid
reinforcing members, the one rigid reinforcing member being
removably connected to the head plate by fixation means
having at least one portion thereof remaining outside the cover
but hidden below a part of the cover that can be lifted up to gain
access to such portion of the fixation means, and with the one
rigid reinforcing member remaining covered by a portion of the
cover that can be removed from the saddle and replaced with
another rigid reinforcing member without disassembling the
saddle, wherein the headplate has a bottom face to rest onto the

1 The Appeal Brief does not include page numbering. Herein, we cite to
pages of the Appeal Brief by numbering the first page as “page 1” and the
subsequent pages as “page 2” etc.
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back of the equine, and wherein the bottom face of the
headplate includes an elongated recess for receiving said rigid
reinforcing member, wherein said elongated recess for
receiving said rigid reinforcing member has a depth so that the
reinforcing member fits within the elongated recess without
changing the thickness of the head plate, whereby the angular
configuration of the headplate is modified by affixing a
different reinforcing member, with the thickness of the saddle
being the same for anyone of the plurality of reinforcing
members affixed to the head plate.

REJECTIONS
Appellant seeks review of the following rejections:
I. Claims 1 and 5-13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Belton (US 2005/0011167 A1; published Jan. 20, 2005),
Swain (US 2005/0120683 A1; published Jun. 9, 2005), and Schleese (US
5,517,808; issued May 21, 1996).
II. Claims 21, 22, and 24 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Belton and Schleese.
III. Claim 23 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Belton, Schleese, and Swain.

ANALYSIS
Rejection I
Regarding claim 1, the Examiner found that Belton discloses an
adjustable saddle including, inter alia, a headplate 17, 18, and “a plurality of
inverted V-shaped rigid reinforcing members 22-26 each having
substantially the same uniform thickness (for the engagement part 22
because it has to be flushed when placed together with the headplate)” and
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“different angular V-shapes (see [0047], members 24-25 are each made
different depending on the horse's size).” Ans. 4-5.
Belton discloses that Figure 4 shows the internal configuration of
bearing part 23 for different-sized horses. See Belton, para. [0047]. Figure
4 shows a first bearing part configuration (solid outline) for a small horse; a
modified second bearing part configuration (dotted outline) for a bigger
horse having a wider spine and relatively lower withers; and a third bearing
part configuration (chain dotted outline) for a tall but relatively slender
horse, having higher withers but a narrower spine. Id. Belton discloses that
“[i]t is important to appreciate that, in each of the three different
configurations shown in FIG. 4, the outwardly facing engagement part 22
remains the same, thus ensuring that each replaceable part fits well with the
body of the tree.” Id. at para. [0048].
Appellant contends that Belton does not teach “a plurality of inverted
V-shaped rigid reinforcing members each having the same uniform thickness
but different angular V-shapes.” App. Br. 8. Particularly, Appellant
correctly contends that Belton discloses bearing parts 23 with engagement
part 22 configured to fit closely with receiving part 21 (citing Belton, para.
[0045]) to form different internal configurations 30 (citing Belton, p. 3, left
col., ll. 1-4). Id. at 9. Appellant also correctly contends that Belton’s
engagement part 22 remains the same (citing Belton, para. [0048]) for all
bearing parts 23, but internal configuration 30 is different for each bearing
part 23 (citing Belton, fig. 4). Id.
We agree with Appellant that Belton does not disclose that bearing
part 23 has the “same uniform thickness,” as claimed. App. Br. 9. We
construe this limitation to mean that each of the plurality of reinforcing
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members has the same thickness, which, for each reinforcing member, is
uniform. We note that Figure 6 of Appellant’s application shows a
reinforcing member 9 configured to be received in elongated recess 8 of
headplate 6. See Spec. 9, ll. 3-7. Figure 6 appears to show that reinforcing
member 9 has a uniform thickness. This appearance is consistent with the
description in the Specification that “[m]ember 9 is preferably a metal band
having a thickness corresponding to the depth of recess 8 and more
preferably band 9 remains entirely within the recess in order that bottom
face 7 is uniform and if band 8 must be thicker the thickness will not affect
the horse.” Id. (emphasis added). Our construction of “same uniform
thickness” is consistent with Appellant’s Specification.
We also note the depictions of Appellant’s reinforcing member
labeled as “Scheme 3” (“Narrower”) and “Scheme 4” (“Wider”). See Evid.
App’x. These depictions appear to show reinforcing members “having the
same uniform thickness but different angular V-shape.” Our construction of
“same uniform thickness” is also consistent with these depictions.
As noted supra, the Examiner found that Belton’s “reinforcing
members 22-26” correspond to the claimed “reinforcing member.” Portions
of Belton’s bearing part 23 shown, for example, in Figure 2 are identified by
reference numbers 22 and 24-26. However, free ends 24, 25 are depicted as
having a different thickness from engagement part 22. See Belton, figs. 2, 4.
Thus, Belton’s “reinforcing member,” as found by the Examiner, does not
have the “same uniform thickness,” as we construe this recitation.
Appellant also contends that for the outer configuration of bearing
part 23 to remain the same and inner configuration 30 to substantially
change as shown in Figure 4, the thickness of bearing part 23 must also
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change. App. Br. 10. We agree with Appellant in that the Examiner did not
make a finding supported by a preponderance of the evidence that a plurality
(i.e., at least two) of the different bearing part 23 configurations shown in
Figure 4 of Belton, or otherwise disclosed by Belton, have “the same
uniform thickness” and “different angular V-shaped,” as called for by claim
1.
Claim 1 further requires that “the head plate hav[e] a flexibility
capable of permitting the head plate to resiliently deform and accommodate
to any one of the rigid reinforcing members.” The Examiner acknowledged
that Belton does not describe this claim limitation (Ans. 6) and relied on
Schleese for teaching a flexible, resilient headplate (Id. at 7 (citing Schleese,
col. 5, ll. 12-20)); see also Ans. 14). However, the Examiner’s reliance on
Schleese does not cure the deficiencies of Belton discussed supra.
Appellant contends that “it only makes sense if [Belton’s] headplate is
inflexible.” App. Br. 13. As discussed supra, Belton discloses that
engagement part 22 is configured to fit closely with receiving part 21 and,
that in each configuration of bearing part 23 shown in Figure 4, outwardly
facing engagement part 22 remains the same. Appellant further contends
that in Belton “each different outwardly facing engagement part is
configured to match the receiving part because the receiving part is not
flexible and cannot deform. That is, the engagement part is fitted to the
dimensions of the receiving part even though the internal configuration may
differ.” Id. at 14. We agree with Appellant that the Examiner did not
articulate an adequate reason with rational underpinning why one skilled in
the art would have modified Belton’s saddle in view of Schleese to result in
“the head plate having a flexibility capable of permitting the head plate to
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resiliently deform and accommodate to any one of the rigid reinforcing
members,” as claimed.
In view of the above, we do not sustain the rejection of claim 1, or its
dependent claims 5-13.
Rejection II - Claims 21, 22, and 24
Independent claim 21 recites, inter alia, “two or more rigid
reinforcing members, wherein the rigid reinforcing members have an
inverted V-shape and have the same thickness and which thickness
corresponds to the depth of the elongated channel so that the rigid member
remains entirely within the channel, and wherein each of the two or more
rigid reinforcing members is open at different angles to accommodate
different dimensions of a horse.” Emphasis added. We construe the
limitation reciting “the same thickness and which thickness corresponds to
the depth of the elongated channel” as meaning that each one of the two or
more reinforcing members has a single thickness, and that the thickness of
each one of the two or more reinforcing member is the same.
The Examiner’s findings regarding the “reinforcing member” of
Belton are similar to those discussed supra for claim 1. Ans. 10. The
Examiner appears to rely on Schleese for the same reasons discussed supra
for claim 1. Id. For reasons similar to those discussed supra for claim 1, we
agree with Appellants that the combination of Belton and Schleese does not
render obvious the claim limitation of “two or more rigid reinforcing
members [that] . . . have the same thickness and which thickness
corresponds to the depth of the elongated channel so that the rigid member
remains entirely within the channel.” App. Br. 17. Thus, we do not sustain
the rejection of claim 21, or its dependent claims 22, and 24.
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Rejection III - Claim 23
Claim 23 depends from claim 21. The Examiner’s further reliance on
Swain for the rejection of claim 23 (Ans. 11) does not cure the deficiencies
of the rejection of claim 21, discussed supra. Thus, we do not sustain the
rejection of claim 23.

DECISION
The Examiner's decision rejecting claims 1, 5-13, and 21-24 is
REVERSED.

REVERSED

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