Ex Parte D622531 et al

Patent Trial and Appeal BoardJun 1, 2018

95001549 (P.T.A.B. Jun. 1, 2018)

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. 95/001,549 02/17/2011 D622531 SMCY-172-603 1917 23342 7590 06/01/2018 KILPATRICK TOWNSEND & STOCKTON LLP Mailstop: 22 - IP Docketing 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER RUDZINSKI, KEVIN KEITH ART UNIT PAPER NUMBER 2911 MAIL DATE DELIVERY MODE 06/01/2018 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 ____________________ SIMMONS BEDDING COMPANY Requester and Appellant v. SEALY TECHNOLOGY LLC Patent Owner and Respondent ____________________ Appeal 2018-003420 Reexamination Control 95/001,549 US Patent D622,531 S1 Technology Center 2900 ____________________ Before JOHN C. KERINS, DANIEL S. SONG, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL 1 Issued to Morrison et al. on August 31, 2010. Appeal 2018-003420 Reexamination Control 95/001,549 US Patent D622,531 S 2 BACKGROUND On March 31, 2015, the Patent Trial and Appeal Board ("the Board") entered a Decision reversing the Examiner's decision not to reject the claims. The Board thus entered a new ground of rejection of the claim pursuant to 37 C.F.R. § 41.77(b). The Decision provided the Patent Owner with two options under 37 C.F.R. § 41.77(b): (1) file a response requesting reopening of prosecution before the examiner; or (2) request that the proceeding be reheard before the Board upon the same record. On May 29, 2015, the Patent Owner filed a response requesting that prosecution be reopened before the Examiner. The Third Party Requester ("Requester") filed comments on the Patent Owner's response on June 29, 2015. The Examiner issued his Determination on September 12, 2017, and the Patent Owner and Requester each filed Comments on the Determination on October 12, 2017. Patent Owner and Requester then each filed comments to each other’s Comments on the Determination on November 13, 2017. ANALYSIS We first point out that, having chosen to reopen prosecution, the Patent Owner was required to submit new evidence that would overcome the Examiner’s rejection or make amendments to the claims. The Patent Owner submitted evidence, which we previously reviewed only for procedural purposes and not on any substantive level. We agree with Requester that the evidence submitted by the Patent Owner is not actually new evidence, but is merely a cumulative summary of, and mostly a rehash of, prior attorney arguments and declaration evidence already submitted to the Patent Office, and is insufficient to overcome the Examiner’s rejection. See, e.g., Req. Appeal 2018-003420 Reexamination Control 95/001,549 US Patent D622,531 S 3 Comments 6–8. On this basis alone we could reject the Patent Owner’s arguments, but nevertheless we will address certain of the substantive arguments infra. Claim Construction The Patent Owner asserts that the Board’s construction of the term “contrast” is too broad and also submits dictionary definitions in support of their argument that more contrast is needed than what is shown in the prior art. See, e.g., PO Comments 3–8. We first note that the Patent Owner agreed to the construction during the original reexamination prosecution and so there is no basis upon which to object now to a construction that has already been conceded. Dec. 4. Furthermore, the Patent Owner submits for the first time dictionary definitions of terms such as “contrast” after the Examiner’s Determination. The Patent Owner has submitted no basis for good cause and we see no reason why such submission could not have been earlier made for the Examiner’s consideration. It is too late to now submit evidence that the Examiner has not had a chance to consider. Lastly, even if we did consider it, the Patent Owner is arguing for construction, not of claim language, but of the definition of a term utilized in describing Design Patent Drawings that show contrasting elements. We do not consider it proper to attempt to redefine the term “contrast” as a drawing element so as to narrow the construction of the drawings themselves, which in design patents represent the claimed invention. Having agreed to the construction and not having timely raised this issue with the Examiner, we do not alter our application as to what level of contrast is necessary and it remains “one of differing appearance from the rest of the mattress…[such Appeal 2018-003420 Reexamination Control 95/001,549 US Patent D622,531 S 4 as] by: contrasting fabric, contrasting color, contrasting pattern, and contrasting texture…[that] can be seen as being different and thus visually distinguished from the rest of the mattress.” Dec. 6–7. Prior Art Status The Patent Owner also argues that various references have not properly been established as prior art. PO Response 11–15. With regard to Aireloom Heritage and Lemoyne Ultimate Pillow Top, the Patent Owner takes issue with the use of the Internet Archive as sufficient verification of the dates. As Requester states, however, the Internet Archive is widely accepted as a valid authentication of the date of availability of pages on the Internet. Req. Comments 17. Furthermore, these documents each include copyright dates that predate the Patent Owner’s filing date and so the Internet Archive is merely corroborative of what is already on the face of each of these two documents. As to Beautyrest Primo, the Patent Owner asserts that the Requester has failed to show “that Beautyrest Primo document was accessible to any member of the public prior to the filing date of the ’531 patent.” PO Resp. 15. As the Requester states, however, “the reference is plainly a published catalog” and that it “is the polished presentation of a marketing document for Simmons is clear on its face.” Req. Reply 18–19. Also, as with the other references, this reference has a date on it of Summer/Autumn 2008 and so, to an extent, its date is clear on the face of the document. As to the Patent Owner’s argument that the Federal Rules of Evidence should apply, we agree with the Requester that an inter partes reexamination Appeal 2018-003420 Reexamination Control 95/001,549 US Patent D622,531 S 5 is not a contested case and therefore the Rules of Evidence do not apply. Id. at 19. Rosen References We first note that much of the Patent Owner’s argument relies on its attempt to narrow the definition of “contrast” so as to impose more distinct contrast than what the references show and also than our construction requires. For that reason alone, we disagree with the Patent Owner’s attempt to disqualify the prior art at issue as proper Rosen references. Further, we agree with the Requester that the Patent Owner attempts to conflate anticipation analysis with the lower bar of determining whether a piece of prior art is a Rosen reference. As the Requester states, “if a reference discloses every element of the design, the reference anticipates the design— in which case ‘no obviousness analysis would be required.’” Req. Reply 14. As previously stated, we consider that the fact that three of the five references include five of the six required elements and two additional contain all six sufficient to conclude that each of the references at issue is “basically the same” as the claimed invention, and thus a proper Rosen reference. Dec. 5–7. Secondary Considerations We agree with the Examiner’s determination that Sealy’s secondary considerations evidence lacks the necessary nexus to the claims. Ex’r Det. 7–8. First, as noted by the Requester, mere commercial success of a product is insufficient as the necessary showing is that the commercial success is because of the patented design. See Req. Comments 31–36. More specifically, “Sealy offers no consumer feedback or other evidence that its Appeal 2018-003420 Reexamination Control 95/001,549 US Patent D622,531 S 6 customers bought those products because of contrasting edging or vertical handles.” Req. Comments. 35. Furthermore, Sealy’s sales data includes mattresses that are not even covered by the patent at issue. See Req. Comments 34. Lastly, even Sealy’s declaration evidence shows that Sealy promoted the mattresses included in the sales data on unclaimed features, which undercuts the necessary link between the success and the patented design. Req. Comments 36 (Citing Platek Decl. Ex. A-1). Regarding the evidence of industry praise, we agree that such statements referring to “the entire Stearns & Foster product line” are insufficient to show a nexus to the specific products that would be covered by the patent. Req. Comments. 42. In sum, we agree that “[a]ll of Sealy’s arguments regarding secondary considerations suffer from a common flaw— lack of any nexus to the actual D’531 design.” Id. Conclusion For the reasons stated above, we AFFIRM the Examiner’s determination “that the submissions by the Patent Owner do[] not overcome the new grounds of rejection stated in the Board’s decision.” Ex’r Det. 9. Appeal 2018-003420 Reexamination Control 95/001,549 US Patent D622,531 S 7 PATENT OWNER: KILPATRICK TOWNSEND & STOCKTON LLP Mailstop: 22 - IP Docketing 1100 Peachtree Street Suite 2800 Atlanta GA 30309 THIRD PARTY REQUESTER: ROPES & GRAY LLP Prudential Tower, IPRM - Floor 43 800 Boylston Street Boston, MA 02199-3600