Ex Parte Sparacino

Board of Patent Appeals and Interferences

Oct 31, 2007

10723000 (B.P.A.I. Oct. 31, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GINA SPARACINO
____________

Appeal 2007-2069
Application 10/723,000
Technology Center 3600
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Decided: October 31, 2007
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Before TEDDY S. GRON, CAROL A. SPIEGEL, and MARK NAGUMO,
Administrative Patent Judges.

GRON, Administrative Patent Judge.

DECISION ON APPEAL

Introduction
This is an appeal under 35 U.S.C. § 134 from an Examiner’s final
rejection, under 35 U.S.C. § 103, of Claims 1-18 of Application 10/723,000,
filed November 26, 2003. Claims 1, 2, 5, 6, 8-13, 16, and 18 stand finally
rejected under 35 U.S.C. § 103(a) in view of Seal et al. (Seal), U.S. Patent
Appeal 2007-2069
Application 10/723,000

5,347,797, patented September 20, 1994 (Supplemental Examiner’s Answer,
entered May 16, 2006, page 3 (Ans. 3)). Claims 3, 4, 7, 14, and 15 stand
finally rejected under 35 U.S.C. § 103(a) in view of the combined teachings
of Seal and Willson, U.S. Patent 4,608,812, patented September 2, 1986
(Ans. 3). Claim 17 stands finally rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Seal and Solatinow, U.S. Patent 918,212,
patented April 13, 1909 (Ans. 3). We AFFIRM.
Independent Claims 1, 8, and 18, reproduced below, are representative
of the claimed subject matter.
1. Auxiliary saddle stirrup for facilitating mounting of a horse
having a saddle secured thereon, comprising:
a strap having an upper end and a lower end, the upper end
being attachable to the saddle at a location rearwardly remote from a
primary stirrup on the saddle;
a foot loop on the lower end of the strap so as to be positioned
behind and below the primary stirrup when the strap hangs down from
the saddle.

8. A saddle comprising:
a seat;
a primary stirrup hanging downwardly from the seat; and
an auxiliary stirrup hanging downwardly from the seat behind
and below the primary stirrup.

18. A method for a rider to mount a horse having a saddle secured
thereto, comprising:
placing the rider’s right foot into a first stirrup hanging from the
saddle; then
stepping up on the first stirrup; then
placing the rider’s left foot into a second stirrup hanging from
the saddle, the first stirrup being behind and below the second stirrup,
and without crossing the rider’s legs; then
stepping up on the second stirrup,
removing the right foot from the first stirrup; and then
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swinging the rider’s right leg over the horse so that the rider is
seated in the saddle.

Appellant has not argued the patentability of any of the dependent
claims separately from the independent claims. Rather, Appellant argues
that one limitation critical to the invention defined by independent Claims 1,
8, and 18 patentably distinguishes the subject matter defined by its claims
from the subject matter described by Seal (Corrected Brief On Appeal, dated
April 12, 2006 (Br. 3-10)). That one limitation defines the auxiliary stirrup
as hanging downwardly from the seat of the saddle at a location below and
“behind . . . the primary stirrup” (Br. App’x Claims 1 and 8) so that the
rider’s left foot may be placed into the primary riding stirrup when the right
foot is in the auxiliary mounting stirrup without crossing legs (Br. App’x
Claim 18). At minimum then, we conclude that every dependent claim on
appeal stands or falls with the claim upon which it depends. Accordingly,
we need consider only the patentability of Claims 1, 8, and 18 under 35
U.S.C. § 103(a) in view of Seal’s disclosure. 37 CFR § 41.37 (c)(1)(vii).

Discussion
1. Claim interpretation
“In proceedings before the PTO, claims in an application are to be
given their broadest reasonable interpretation consistent with the
specification.” In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed.
Cir. 1983). In that light we conclude first that the “auxiliary saddle stirrup”
of Claim 1 comprises “a strap having an upper end and a lower end” with the
upper end being attachable to the saddle and the lower end of the strap
having a foot loop. The phrases "being attachable to the saddle" and "so as
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to be positioned behind and below the primary stirrup when the strap hangs
down from the saddle” are mere expressions of intended use. Accordingly,
the language directed to the position of an attachable auxiliary saddle stirrup
relative to the position of the primary stirrup of a saddle to which the
auxiliary saddle stirrup may or may not be attached does not necessarily
further limit the “auxiliary saddle stirrup” of claim 1.
2. Claim 1 would have been obvious in view of Seal
Seal describes an auxiliary saddle stirrup comprising a strap having an
upper end and a lower end. The upper end of the strap is attachable “on any
saddle having a horn, stirrup bar or any other device by which . . . [the
claimed mounting stirrup assembly] may be attached to the saddle thereby
providing the equestrian with a safe convenient method of mounting said
saddle” (Seal, col. 3, ll. 31-35). The lower end of the strap is attached to the
foot loop of a normal riding stirrup (Seal, Figs. 1, 3, and 6-8; Claims 1-4).
We find that Seal describes every element of the subject matter defined by
Appellant’s Claim 1. We have already concluded that the positioning
language that Appellant argues patentably distinguishes the claimed
auxiliary saddle mounting stirrup from the mounting saddle stirrup assembly
described by Seal does not further limit the full scope of the “attachable”
auxiliary saddle stirrup defined by Appellant’s Claim 1. Accordingly, we
find that the subject matter of Claim 1 would have been obvious in view of
Seal's disclosure, anticipation being the epitome of obviousness.
3. Claims 8 and 18 would have been obvious in view of Seal
Claim 8 is directed to a saddle comprising a seat having both primary
and auxiliary stirrups attached to the seat, the auxiliary stirrup "hanging
downwardly from the seat behind and below the primary stirrup” (Br. App’x
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Claim 8). Claim 18 is drawn to a method for a rider to mount a horse having
a saddle defined by Claim 8 secured thereto. From Appellant's
characterization of the Seal saddle (Specification 1:25–26; 2:20-21) and the
claimed saddle, it is evident that "behind" means "further from the horse's
head."
Seal appears to depict a Western saddle having the auxiliary stirrup
ahead of the primary stirrup (Figs. 1 and 2). Seal also expressly describes
and depicts an English saddle having the auxiliary stirrup even with the
primary stirrup (Figs. 3 and 6–8). In Seal's words, "When the loop 2 is
passed over the stirrup bar 7, the stirrup bar already has straps from the
saddle's regular stirrups attached to it. Therefore, the loop 2 has to be
sufficiently large to allow the loop 2 to fit over the stirrup bar when the
regular stirrup straps are already attached" (Seal, col. 2, ll. 34–39). In both
cases, the auxiliary stirrup hangs below the primary stirrup.
As to Claim 8, the issue is whether attaching the auxiliary stirrup to
the saddle at a position so as to hang behind and below the primary stirrup of
the saddle would have been obvious to a person having ordinary skill in the
art. To establish the obviousness of the claimed subject matter, all the claim
limitations must be taught or suggested by the prior art. In re Royka, 490
F.2d 981, 985, 180 USPQ 580, 583 (CCPA 1974).
“Section 103 forbids issuance of a patent when the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which
[the] subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734, 82 USPQ2d 1385, 1391 (2007). “If a person of ordinary skill in the
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art can implement a predictable variation, and would likely see the benefits
of doing so, § 103 likely bars its patentability.” Id at 1740, 82 USPQ2d at
1396. In KSR, the Supreme Court rejected a rigid application of the
teaching, suggestion, or motivation test in an obviousness inquiry.
Id. at 1739, 82 USPQ2d at 1395. The Court noted the importance of
identifying “a reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the claimed new
invention does” to avoid hindsight reconstruction of the claimed invention.
Id. at 1731, 82 USPQ2d at 1396. The Court emphasized, “[W]hen a patent
claims a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR Int’l Co., 127 S.Ct. at
1740, 82 USPQ2d at 1395.
In this case, Appellant claims a structure described and depicted by
Seal that has been altered to reposition the auxiliary mounting stirrup behind
the primary or normal riding stirrup of the saddle. The record indicates that
saddles are relatively simple mechanical devices that have numerous points
of attachment for auxiliary equipment, such as the pommel of the Western
saddle, the stirrup strap 7, or the D-ring 9, which Seal describes as "normally
a part of any English riding saddle" (Seal, col. 3, ll. 7–8) Thus adding
additional points of attachment appears to have been within the level of
ordinary skill in the art. Hence, we have no trouble finding that Seal's
teaching that the auxiliary mounting stirrup may be used “on any saddle
having . . . any other device by which the invention may be attached to the
saddle thereby providing the equestrian with a safe convenient method of
mounting said saddle” (Seal, col. 3, ll. 31-35), would have taught persons
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having ordinary skill in the art that the upper end of any strap holding Seal’s
auxiliary mounting stirrup may be attached to a Western or English Saddle
at any position on the saddle relative to the primary or normal riding stirrup
which attachment position is consistent with safe mounting. Therefore, in
the absence of a showing of unexpected results, the invention Appellant
claims would have been obvious to a person having ordinary skill in the art.
Appellant appears to argue that the elimination of whatever leg-
crossing problems might be associated with Seal’s invention is a result
sufficiently unpredictable to warrant the patentability of the claimed
invention over the invention Seal describes and suggests. We think not. As
the Supreme Court explained, “[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond that person’s skill.” KSR at
1734, 82 USPQ2d at 1391.
Appellant urges that the Examiner's silence as to the evidence (frames
taken from a CD video submitted after the final rejection1) requires reversal
(Reply Brief filed 9 September 2005, at 2.) This argument lacks merit.
Even accepting Appellant's characterizations of what the frames show, the
crossing of the legs required when mounting the prior art assembly and the
absence of crossing of the legs when mounting the claimed invention result
from the relative positions of the auxiliary stirrups to the primary stirrups.
The weight of the evidence of record indicates that the different relative
positions of the auxiliary stirrup to the primary stirrup and the benefits
derived therefrom would have been predictable to persons having ordinary

1 Appellant appears to suggest that the Examiner did not view the CD video.
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skill in the art. Seal’s preference for convenience in attaching the strap of
the auxiliary stirrup to the saddle (Seal, col. 3, ll. 29-35) does not diminish
the obviousness of nonpreferred, inconvenient embodiments. In re Burckel,
592 F.2d 1175, 1179, 201 USPQ 67, 70 (CCPA 1979); In re Lamberti, 545
F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976). We find that the
evidence supporting nonobviousness is outweighed by the evidence
supporting obviousness.
According, we conclude that the subject matter defined by Appellant’s
Claims 1, 8, and 18 would have been obvious to a person having ordinary
skill in the art at the time made and is, therefore, unpatentable under 35
U.S.C. § 103(a) over Seal. Since all dependent claims stand or fall with
Appellant’s Claims 1, 8, and 18, we affirm the Examiner’s final rejections of
Claims 1-18 of Application 10/723,000, filed November 26, 2003, under 35
U.S.C. § 103(a).

Conclusion
Having considered all the evidence and arguments of record for and
against the patentability of Claims 1-18 of Application 10/723,000 under 35
U.S.C. § 103(a), we affirm all the appealed final rejections.

Order
Upon consideration of the appeal, and for the reasons given, it is
ORDERED that the decision of the Examiner rejecting Claims 1-18 of
Application 10/723,000 under 35 U.S.C. § 103(a) is affirmed; and
FURTHER ORDERED that the time for taking future action in this
appeal cannot be extended under 37 CFR § 1.136(a)(2006).
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AFFIRMED

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