Ex Parte Kozel et al

Patent Trial and Appeal BoardFeb 27, 2019

15472749 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/472,749 03/29/2017 23413 7590 03/01/2019 CANTOR COLBURN LLP 20 Church Street 22nd Floor Hartford, CT 06103 FIRST NAMED INVENTOR Anne Kozel 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 ATTORNEY DOCKET NO. CONFIRMATION NO. SSB0046USC 6529 EXAMINER KURILLA, ERIC J ART UNIT PAPER NUMBER 3673 NOTIFICATION DATE DELIVERY MODE 03/01/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANNE KOZEL and MARK OWEN 1 Appeal2018-004070 Application 15/472,749 Technology Center 3600 Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and FREDERICK C. LANEY, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision, set forth in the Non-Final Action dated May 4, 2017 (hereinafter "Non-Final Action" or "Non-Final Act.") rejecting claims 1-7 and 11-13.2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to 37 C.F.R. Â§ 41.50(b). 1 Dreamwell, Ltd. (Appellant) is the applicant as provided in 37 C.F.R. Â§ 1.46 and is identified as the real party in interest. Br. 2. 2 Claims 8-10 were canceled in an Amendment submitted on August 21, 2017, with the Appeal Brief. Appeal2018-004070 Application 15/472,749 THE CLAIMED SUBJECT MATTER Claims 1 and 13 are independent. Br. 13-14 (Claims App.). Claim 1, reproduced below, is illustrative of the claimed subject matter. 3 1. A mattress assembly comprising: a mattress core; a headboard attached to the mattress core, wherein the headboard is attached to a sidewall of the mattress core and extends vertically upwards parallel to the sidewall; and a mattress cover at least partially enclosing the core, wherein an outermost surface of at least one of the mattress core, the mattress cover, and the headboard is configured with a customer assistance sensory device configured to provide to a customer a radiofrequency identification tag, or a tactile surface indicative of one or more parameters of the mattress core, wherein the customer assistance sensory device consists of a member physically attached to the outermost surface of at least one of the mattress core, the mattress cover, and the headboard, wherein the member includes a top surface that is parallel to the outermost surface and free of any protrusions or attachments extending upwardly, and wherein the top surface of the customer sensory assistance device provides to the customer the radiofrequency identification tag, or the tactile surface indicative of the one or more parameters of the mattress core and is viewable by an end user from a foot end of the mattress assembly. REJECTIONS I. Claim 13 stands rejected under 35 U.S.C. Â§ I02(b) as anticipated by Wright (US 2003/0118795 Al, published June 26, 2003). 3 Claim 13 is substantially similar to claim 1, except that claim 13 does not recite a headboard. Br. 14 (Claims App.). 2 Appeal2018-004070 Application 15/472,749 II. Claims 1, 2, 6, 11, and 12 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Wright and Trussell (US 2004/0073931 Al, published Apr. 15, 2004). III. Claims 3-5 and 7 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Wright, Trussell, and Official Notice. IV. Claim 1 stands rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Esterman (US 2003/0029062 Al, published Feb. 13, 2003) and Wright. V. Claims 1-7, 11, and 12 stand provisionally rejected on the ground of obviousness-type double patenting as unpatentable over claims 1-11 of copending Application 12/624,634 and Wright. DISCUSSION Rejections I-IV (Anticipation and Obviousness) For the reasons discussed below in the new ground of rejection, we determine that claims 1-7 and 11-13 are indefinite. Having determined that these claims are indefinite, we cannot sustain the rejections of these claims under 35 U.S.C. Â§Â§ I02(b) and I03(a) because to do so would require speculation as to the scope of the claims. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims); In re Steele, 305 F .2d 859, 862- 63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. Â§ I03(a) because the rejection was based on speculative assumptions as to the meaning of the claims). It should be understood, however, that our decision in this regard is based solely on the 3 Appeal2018-004070 Application 15/472,749 indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. Rejection V (Obviousness-type Double Patenting) Application 12/624,634 matured into a patent (US 9,756,959) on September 12, 2017 and, thus, is no longer pending. Claims 5-16 were canceled from Application 12/624,634 in an Amendment submitted March 23, 2017, prior to issuance of the patent. In light of these circumstances, we leave it to the Examiner to determine, upon return of jurisdiction of the present application to the Examiner after termination of proceedings in the present appeal, whether a rejection of any of the claims of the present application under the doctrine of obviousness-type double patenting is appropriate. NEW GROUND OF REJECTION Pursuant to our authority under 37 C.F.R. Â§ 4I.50(b ), we reject claims 1-7 and 11-13 under 35 U.S.C. Â§ 112, second paragraph, as indefinite. Claims, when read in light of the specification, must "reasonably apprise those skilled in the art both of the utilization and scope of the invention" using language "as precise as the subject matter permits." In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). Independent claims 1 and 13 recite, in pertinent part, "a customer assistance sensory device configured to provide to a customer a radiofrequency identification tag, or a tactile surface indicative of one or more parameters of the mattress core." Br. 13, 14 (Claims App.) (emphasis added). Appellant's Specification does not expressly define "tactile 4 Appeal2018-004070 Application 15/472,749 surface," but discloses that "[t]actile signals may comprise a texture or firmness." Spec. ,r 7. Thus, we construe a "tactile surface" as a surface comprising a texture or firmness. The Specification discloses that "[ s ]uch textures may include a rough surface, geometrically patterned ridges or bumps, a glassy smooth surface, a silky smooth texture, or a tacky texture," but does not exclude any type of texture from the scope of the invention. Spec. ,r 22 ( emphasis added). Appellant's Specification discloses that the sensory devices "may have one or more textures that correspond to one or more parameters of mattress core 102" and that, "[ o Jptionally," the sensory devices "may vary in firmness according to mattress core parameters." Id. (emphasis added). "For example," the sensory devices "may have a gel-like, yielding texture if mattress core 102 incorporates gel technology" or "may have textures and tactile responses similar to latex foam" if the mattress core "includes latex foam technology." Id. ( emphasis added). However, the Specification does not define "indicative of' as requiring a texture or firmness physically corresponding to or similar to the texture or firmness of the mattress core, nor does Appellant's Specification explain how the one or more textures would correspond to one or more parameters of the mattress core. Moreover, Appellant's Specification does not place any meaningful limits on the scope of "parameters of the mattress core." See id. ,r,r 7 (identifying "mattress core type" as one example of a "parameter" of the mattress core, thereby suggesting that the scope of "parameter" is broader than mattress core type), 25-26 and 29 (including "non-physical parameters, such as information about user ratings or popularity of a particular mattress core type," availability of the mattress core, manufacturer of the mattress core, 5 Appeal2018-004070 Application 15/472,749 store location or location within a store where the mattress core may be found, test data related to the mattress core, or "other such information" within the scope of "parameter"). Although, as discussed above, Appellant's Specification does not define what is meant by "indicative of," the Specification uses the term "indicate." See Spec. ,r 21. The Specification discloses that, for example, a magenta color may be used if the mattress core contains encased coil technology, an orange color may be included if the mattress core contains memory foam comprising high-density polyurethane, and that a color, such as dark blue, "may be used to indicate that a combination of technologies are present in [the] mattress core." Id. Thus, at least within the context of visual presentation of information, the Specification uses the term "indicate" in a manner that does not require an inherent, universally recognized physical correspondence, or physical similarity, between the signal and the parameter of which the signal is "indicative. "4 We cannot ignore the phrase "indicative of one or more parameters of the mattress core" when construing the scope of claims 1 and 13. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) ( denouncing claim constructions which render phrases in claims superfluous). However, given the breadth of the scope of "parameters of the mattress core" suggested by Appellant's Specification, the lack of any inherent, objective, universally recognized physical correspondence between the tactile surface and one or more parameters of the mattress core denoted by the term "indicative of' as the term "indicate" is used in the 4 Outside of the claims, the present application does not use the terminology "indicate" or "indicative of' specifically in the context of a "tactile surface." 6 Appeal2018-004070 Application 15/472,749 Specification, and the absence of any disclosure in the Specification and, in particular, the absence of any recitation in claims 1 and 13, of a means for defining, for the customer, a correlation between the tactile surface and one or more parameters of the mattress core, a person of ordinary skill in the art would not be able to ascertain whether a particular surface of a mattress core, mattress cover, or headboard is configured with a customer assistance sensory device configured to provide to a customer "a tactile surface indicative of one or more parameters of the mattress core" as called for in claims 1 and 13, so as to be covered by the claims. 5 In short, the present application does not provide a clear, unambiguous, and objective standard by which to ascertain the metes and bounds of independent claims 1 and 13, or the claims depending from claim 1. See Datamize LLC v. Plumtree Software Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (holding that some objective standard must be provided to allow the public to determine the scope of the claimed invention). Accordingly, claims 1 and 13, as well as claims 2-7, 11, and 12, which depend from claim 1, when read in light of the Specification, do not reasonably apprise those skilled in the art of the scope of the invention and, thus, do not comply with the definiteness requirement of 35 U.S.C. Â§ 112, second paragraph. 5 Appellant asserts a distinction between the claimed subject matter and the prior art on the basis that the prior art "does not intend the visual, auditory or tactile preset signal to be indicative of one or more parameters as claimed and described by Appellant[] in the [present] application." Br. 11. This argument amply demonstrates the indefiniteness of the claims. A person having ordinary skill in the art cannot be expected to infer the intent of a manufacturer, merchant, or customer in attempting to determine whether a particular structure falls within or outside the scope of the claims. 7 Appeal2018-004070 Application 15/472,749 DECISION We reverse the Examiner's decision rejecting claims 1-7 and 11-13 under 35 U.S.C. Â§Â§ 102(b) and 103(a). We leave it to the Examiner to determine whether a rejection of any of the pending claims under the doctrine of obviousness-type double patenting is appropriate. We enter a new ground of rejection of claims 1-7 and 11-13 under 35 U.S.C. Â§ 112, second paragraph. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 4I.50(b). 37 C.F.R. Â§ 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. 8 Appeal2018-004070 Application 15/472,749 (2) Request rehearing. Request that the proceeding be reheard underÂ§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining ProcedureÂ§ 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). REVERSED; 37 C.F.R. Â§ 4I.50(b) 9