Ex Parte D622531 et al

Patent Trials and Appeals BoardMar 29, 2019

95001549 - (R) (P.T.A.B. Mar. 29, 2019)

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 03/29/2019 KILPATRICK TOWNSEND & STOCKTON LLP Mailstop: 22 - IP Docketing 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER BUGG, GEORGE A ART UNIT PAPER NUMBER 2911 MAIL DATE DELIVERY MODE 03/29/2019 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 REHEARING 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 to not reject the claim. 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. We entered a Decision (under 37 C.F.R. § 41.77(f)) on June 1, 2018, affirming the Examiner’s Determination, which rejected the claim. Patent Owner then filed a Request for Rehearing (Req.) and Requester filed its Comments thereto. ANALYSIS Claim Construction Patent Owner presents several arguments asserting that the Board misapprehended or overlooked evidence relating to claim construction and that the claim construction should be altered in accord with its requested claim construction argued in both prior appeals. Req. 4–9. Requester is Appeal 2018-003420 Reexamination Control 95/001,549 US Patent D622,531 S 3 correct, however, that any arguments requesting rehearing on our claim construction were waived “by not seeking rehearing of the Board’s 2015 Decision on Appeal.” Comments 4. Our claim construction has stayed consistent throughout this proceeding and if Patent Owner had an issue with that construction, the proper time to contest it would have been after our original Decision. Furthermore, as Requester details, Patent Owner’s own prior statements support our construction and were not taken out of context. See Comments 3–4. Accordingly, we decline to alter our claim construction. Visual Impression Patent Owner next argues that we misapprehended the correct visual impression created by the patented design as a whole. Req. 9–11. We first note that most, if not all, of this argument seeks to have us change our construction of the term “contrast,” which as noted above, we decline to do. As to the correct visual impression, Patent Owner’s arguments contradict its own prior statements as to what contrast means. Patent Owner asserts that “the claimed design as a whole includes a unified design that uses contrast between certain edges and the remainder of the mattress to unify the appearance of tape and handle edges of the mattress and thus provide a continuous appearance on each of those edges and the two handles on each of the four sides of the mattress.” Req. 10. This is allegedly juxtaposed with the Europa mattress, solely because “it is an all-white mattress” that nowhere shows contrast. Req. 11. This directly contradicts Patent Owner’s previous statement that the claimed design “broadly cover[s] contrasting surfaces unlimited by colors.” Comments 3 (citing PO Resp. Br. 5, 7). Patent Owner cannot have it both Appeal 2018-003420 Reexamination Control 95/001,549 US Patent D622,531 S 4 ways. The mere fact that Europa is all white does not preclude that mattress from having contrast. We agree that Europa does not contrast in color, but there is contrast in fabric pattern/texture such that it properly meets our construction and creates the same overall visual impression as the claimed design. Again, Patent Owner’s arguments require an improperly narrow understanding of the term contrast, which we have already rejected twice previously. Prior Art Status Patent Owner also continues to challenge our findings relating to the status of the various references as prior art. As Requester states, Sealy’s request fails identify any arguments or authority the Board allegedly “misapprehended or overlooked.” Comments 9. Sealy merely restates prior arguments, which we have already rejected. Accordingly, we decline to change our Decision relating to the status of the references as prior art. Secondary Considerations Patent Owner asserts that we overlooked secondary considerations evidence, specifically that of copying. Req. 13. As stated by Requester, however, we did not overlook evidence of copying, we merely agreed with the Examiner’s general determination as to secondary considerations and then expounded on certain aspects. Dec. 5–6. We commented specifically on commercial success, but endorsed the Examiner’s general findings as a whole, which included the overall lack of nexus finding as well as acknowledging Patent Owner’s assertions as to copying. Ex’r Det. 7–8. As such, we did not overlook any secondary consideration evidence and decline to change our Decision. Appeal 2018-003420 Reexamination Control 95/001,549 US Patent D622,531 S 5 Conclusion For the reasons stated above, we DENY Patent Owner’s Rehearing Request. DENIED 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