Ex Parte Vitale

Patent Trial and Appeal BoardMay 4, 2018

13549583 (P.T.A.B. May. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/549,583 07/16/2012 29494 7590 05/04/2018 HAMMER & ASSOCIATES, P.C. 3125 SPRINGBANK LANE SUITEG CHARLOTTE, NC 28226 FIRST NAMED INVENTOR Rory D. Vitale 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. 2247.2 1356 EXAMINER DA VIS, RICHARD G ART UNIT PAPER NUMBER 3644 MAILDATE DELIVERY MODE 05/04/2018 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 Ex parte RORY D. VITALE Appeal2016-005960 Application 13/549,583 Technology Center 3600 Before JOHN C. KERINS, GEORGE R. HOSKINS, and ANTHONY KNIGHT, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Rory D. Vitale ("Appellant") 1 appeals under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1---6 and 8-11 in this application. The Board has jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 The Appeal Brief identifies JLJ Home Furnishings LLC as the real party in interest. Appeal Br. 3. Appeal 2016-005960 Application 13/549,583 CLAIMED SUBJECT MATTER Claim 1 illustrates the subject matter on appeal, and it recites (with some line breaks added): 1. A fitted sheet comprises: a top portion with two integral lateral side panels and two integral end side panels formed from a single piece of a fabric, each side panel being at an angle to the top portion, each side panel having lateral edge portions, the lateral edge portion of one side panel being affixed to the lateral edge portion of the adjacent side panel, and a plurality of horizontally oriented elastic members affixed to opposing side panels and no plurality of elastic members affixed to the other side panels, the elastic members are selected from the group consisting of core-spun yam, elastic tape, elastic strand, elastic filament. Appeal Br. 14 (Claims App.) (emphases added). REJECTIONS ON APPEAL 2 Claims 1---6, 8, and 11 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Seago '322 (US 5,249,322, issued Oct. 5, 1993) and Seago '570 (US 7,398,570 B2, issued July 15, 2008). 2 The Examiner states "should claim 1 be found allowable," then "claim 11 will be objected to under 37 CPR 1.75 as being a substantial duplicate thereof." Final Act. 4--5. The Examiner thereby indicates an intent to object to claim 11, not to reject claim 11. Review of a claim objection may be had by petition to the Director under 3 7 C.F .R. Â§ 1.181, not appeal to the Board. See 35 U.S.C. Â§ 134(a) ("An applicant for a patent, any of whose claims has been twice rejected, may appeal ... to the Patent Trial and Appeal Board .... " (emphasis added)); 37 C.F.R. Â§ 1.181(a)(l); see also In re Berger, 279 F.3d 975, 984--85 (Fed. Cir. 2002) (discussing, in general, review by petition and by appeal). We, therefore, lack jurisdiction to review the anticipatory claim objection. 2 Appeal 2016-005960 Application 13/549,583 Claims 9 and 10 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Seago '322, Seago '570, and Zafiroglu (US 5,636,393, issued June 10, 1997). ANALYSIS A. Obviousness based on Seago '322 and Seago '570 (Claims 1-6, 8, and 11) Appellant argues claims 1---6, 8, and 11 as one group, without separately arguing any one claim in the group. See Appeal Br. 7-13. Accordingly, we select claim 1 to decide the appeal as to this ground of rejection, with the other grouped claims standing or falling with claim 1. See 37 C.F.R. Â§ 41.37(c)(l)(iv). Claim 1 recites a fitted sheet comprising, inter alia, a top portion, two opposing lateral side panels, and two opposing end side panels. Appeal Br. 14 (Claims App., claims 1-3). Elastic members are affixed either to the opposing lateral side panels or to the opposing end side panels, and no elastic members are affixed to the other pair of opposing side panels. Id. The Examiner finds Seago '322 discloses a fitted sheet exhibiting every claim limitation, except that each of the four side panels includes elastic members, instead of no elastic members being affixed to two opposing side panels. Final Act. 2-3. The Examiner finds Seago '570 discloses a fitted sheet having elastic members 17 on opposing end side panels 13, and no elastic members on opposing lateral side panels 11. Id. at 3 (citing Seago '570, Figs. 1-3); see Seago '570, 5:30-53. The Examiner determines it would have been obvious "to combine the fitted sheet of [Seago '322] with the teaching of [Seago '570] that fitted sheets can function with elastic only on the ends . . . for the purpose of saving on 3 Appeal 2016-005960 Application 13/549,583 material costs." Final Act. 3; id. at 5 (concluding one of ordinary skill in the art would readily recognize the proposed modification "would result in a functioning fitted sheet that cost less to manufacture"). Appellant argues the Examiner's rationale for obviousness "is merely conclusory ... because it provides no reason based on the teachings of the references; instead, the conclusion is merely plucked from thin air." Appeal Br. 10. Appellant additionally accuses the Examiner of ignoring disclosures in Seago '322 and Seago '570 that teach away from the proposed combination. Id. at 10-11. According to Appellant, Seago '322 "teaches that you must encircle" all four side panels with elastic cords to fit mattresses of different thickness and peripheral dimensions. Id. (emphasis added) (citing Seago '322, 1:59--2:24). Appellant contends Seago '570 teaches using a 2-dimensionally elastic panel material, and "explains that elastic cord is not used because that cord has a detrimental impact on the appearance of the mattress cover." Id. (emphasis added) (citing Seago '570, 2:21-24, 2:46-48). Appellant also relies on objective indicia of non-obviousness, allegedly demonstrating a long felt need and commercial success of the claimed invention. Id. at 11-12. As to long felt need, Appellant contends Seago '322 (issued in October 1993) and Seago '570 (issued in July 2008) span a period of over 20 years before Appellant's priority filing date (August 2011). Id. at 11. Appellant asserts "in that time, no product like the instant invention has been introduced to the consuming public," thereby establishing a long felt need, and a lack of simplicity in the combination. Id. As to commercial success, Appellant relies on a Declaration executed by Appellant on August 5, 2015 (hereafter "the Vitale Declaration" or 4 Appeal 2016-005960 Application 13/549,583 "Vitale Deel."). 3 Appeal Br. 12. Appellant alleges the Vitale Declaration establishes "[ t ]he claimed product, in a relatively short period of time, without advertising, and at a price point above competitive products, is selling at multi-million dollars per year sales volumes." Id. Further according to Appellant, the Vitale Declaration "shows (by way of testimonial statements of purchasers) that the commercial success is attributed to the cover's ability to fit a mattress (and that ability is directly linked (a nexus) to the structure of the cover)." Reply Br. 3. The Examiner answers that Seago '570 "demonstrates that the state of the art has progressed since" Seago '322, to "recognize[] that fitted sheets can function by only having elastic on the ends." Ans. 2. The Examiner's view is that the disclosure in Seago '570 concerning elastic cords being detrimental to appearance "is moot," because Seago '322, not Seago '570, is the base reference being modified in the rejection. Id. at 2-3. As to long felt need, the Examiner states "[t]he test for obviousness is not that the invention was not thought of for a period of time." Id. at 3. As to commercial success, the Examiner determines the Vitale Declaration is too conclusory, and lacking in sufficient supporting evidence and analysis, to be persuasive of commercial success having been achieved. Id. at 4. We, first, determine the Examiner has provided a rational underpinning, supported by a preponderance of the evidence, sufficient to 3 The Vitale Declaration was filed with the Office after Appellant's Notice of Appeal. See Adv. Act. (dated Aug. 18, 2015). The Examiner stated the Vitale Declaration "will not be entered" for failure to comply with 37 C.F.R. Â§ 41.33(d)(l), but nonetheless considered the substance of the Vitale Declaration. Id. at Box #10, pg. 2. Because the Examiner addressed the merits of the Vitale Declaration, so shall we. 5 Appeal 2016-005960 Application 13/549,583 support the legal conclusion of obviousness. See In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006), cited with approval in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In particular, we are persuaded that eliminating the elastic members from the two opposing lateral side panels of the Seago '322 fitted sheet would simplify the construction of the sheet, and reduce the material costs of manufacturing the sheet, without sacrificing the sheet's gripping functionality. See Final Act. 3, 5. These benefits would have been within the general knowledge of a person of ordinary skill in the art, particularly in light of Seago '570, which reflects that a fitted sheet can make do with elastic members on only the two opposing end panels of the sheet. See id.; Seago '570, Figs. 1-3, 4: 12-22, 5:45-53, 7:4--22; KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) ("design incentives and other market forces can prompt variations" of a work). Further, while not explicitly cited by the Examiner, the Examiner's stated reasons for modifying the Seago '322 fitted sheet have evidentiary support within Seago '570. Referring to its Figure 1, Seago '570 indicates "advantageous grip and fit characteristics that rival" Seago '322 "will be achieved with the stretch end panel [ 17] provided at partial lower portions of at least one, and preferably both, ends [13] of the mattress," so opposing side panels 11 may be free of elastic members and therefore aesthetically pleasing. Seago '570, 1:20-21, 6:44--7:9, 7:14--18. Seago '570 further provides: "By confining the stretch panel [ 17] to a smaller area of the skirt [9], it is also possible to realize cost savings, due to the potentially higher cost of the stretch material in comparison to the material( s) of the remainder of the sheet .... " Id. at 7:9-13. Thus, Appellant's contention 6 Appeal 2016-005960 Application 13/549,583 that the Examiner's motivation "is merely plucked from thin air" (Appeal Br. 10) is not persuasive. There is no teaching away, in either Seago '322 or Seago '570, from the Examiner's proposed modification of Seago '322 to eliminate elastic members from the opposing lateral side panels. Seago '322 does appear to disclose only embodiments in which all four side panels of the fitted sheet have elastic members. Nonetheless, the Seago '322 disclosure cited by Appellant does not suggest that all four side panels need or are preferred to have elastic members, or otherwise criticize, discredit, or discourage elimination of elastic members from the opposing lateral side panels. See Appeal Br. 10 (citing Seago '322, 1:59--2:24); In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004) (to teach away, a reference must criticize, discredit, or otherwise discourage the claimed solution); see also Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1067-70 (Fed. Cir. 2018) (even in the absence of a teaching away, general preferences as stated in the prior art are still relevant to determining whether a skilled artisan would be motivated to combine the prior art in the manner claimed). Moreover, the Seago '570 disclosure as a whole contradicts Appellant's assertion that column 2, lines 21-24 and 46-48, "explains that elastic cord is not used because that cord has a detrimental impact on the appearance of the mattress cover." Appeal Br. 10 (emphasis added). Seago '570 discloses "[a] wide variety of stretchable materials may be used to form stretch end panels 17," including "elastic threads, cords or fibers." Seago '570, 9:16-26. Seago '570 further indicates "the desired stretchability may be imparted ... using the techniques for stitching lines of elastic cord into a substantially inelastic base fabric disclosed in 7 Appeal 2016-005960 Application 13/549,583 [Seago '322]." Id. at 9:26-30, 1:20-21. Thus, Seago '570 does not teach away from using the elastic cords of Seago '322 in a fitted sheet, but rather teaches the elastic cords can be used in a manner that they are hidden from the user during normal usage of the fitted sheet. Id. at 2:21-24, 2:46-48. We have, moreover, considered Appellant's arguments concerning long felt need and commercial success. Concerning long felt need, Appellant's evidence establishes, at the most, a passage of time from Seago '570's recognizing the benefits of affixing elastic members only to opposing end side panels in October 2006, and Appellant's priority date in August 2011. See Seago '570 (22) (filing date); Spec. 1 ("Related Application"). Such a passage of time, alone, provides little evidence showing a long felt need. In re Kahn, 441F.3d977, 990-91 (Fed. Cir. 2006) (citing Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004)) (applicant must submit actual evidence of long felt need, as opposed to argument, because "[a]bsent a showing of long-felt need or the failure of others, the mere passage of time without the claimed invention is not evidence of nonobviousness"). Concerning commercial success, the Vitale Declaration alleges "[t ]he product claimed in this patent application" achieved commercial success. Vitale Deel. i-f 2. This conclusory opinion is unsupported by evidence in the record to illustrate the product, or otherwise to demonstrate application of the pending claims to the product to establish the product embodies Appellant's claims. Id. i-fi-12, 11. Such evidence and application is particularly important in the present ex parte patent prosecution context, in which the Examiner is largely unable to gather evidence supporting or refuting Appellant's contentions in this regard. Cf PPC Broadband, Inc. v. 8 Appeal 2016-005960 Application 13/549,583 Corning Optical Commc'ns RF, LLC, 815 F.3d 734, 747 (Fed. Cir. 2016) (indicating the presumption that commercial success of products embodying a claimed invention is due to the patented invention "does not apply" in ex parte patent prosecution). Thus, the commercial success (if any) of the product discussed in the Vitale Declaration has not been demonstrated to be relevant to the presently claimed invention. Further, even assuming the product discussed in the Vitale Declaration is as recited in Appellant's claims, we agree with the Examiner's determination that Appellant's arguments are entitled to little weight because they are largely unsupported by evidence in the record. See Ans. 4. In particular, there is only fairly minimal testimony to demonstrate sales of the product were successful. The Vitale Declaration establishes the subject product "had retail sales of about $4.5-5.0 million" from September 2011 through an unspecified ending date prior to August 2015, and was "expected to have ... annual retail sales of about $3 million" in 2015. Vitale Deel. i-fi-14---6 (signed Aug. 5, 2015). The Vitale Declaration establishes the product had been sold through various distribution channels, on-line and via catalog. Id. i15. The product was "the number one sales item in Stoneberry Catalogue" and was "the second best sales item of all sheet sets offered on Brylane." Id. i-fi-17-8. The product further sold for $20-$30 more than allegedly "equivalent" sheet sets, although we are not informed of the actual price(s) to assess how significant the mark-up might be on a percentage basis. Id. i-fi-1 8, 9. The foregoing evidence does little to demonstrate a substantial share of any definable market, or a profitability per unit which is out of the ordinary. See Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 9 Appeal 2016-005960 Application 13/549,583 1026-27 (Fed. Cir. 1985) (evidence demonstrating sales of over 5 million units at a profit of not less than 50 cents per unit, and nationwide distribution in major department store chains and local hardware outlets, was "fairly minimal" evidence of commercial success, absent "further economic evidence"), overruled on other grounds by Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999) (en bane). We must "consider[] the evidence as a whole before reaching a conclusion on the claims' patentability under 35 U.S.C. Â§ 103(a)." In re Brandt, 886 F.3d 1171, 1176 (Fed. Cir. 2018) (citing Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) and In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011)). Therefore, weighing the entirety of the evidence in the record before us as set forth above, both for and against obviousness, we conclude the Examiner has the better position regarding the unpatentability of claim 1. As set forth above, the prior art cited by the Examiner firmly supports the conclusion of obviousness. Appellant's reliance on alleged long felt need and commercial success, by contrast, is not supported by the evidence, which establishes only a mere passage of time, and sales of a product which has not been shown to be covered by the presently claimed invention. Further, even if we were to accept that the product sales identified in the Vitale Declaration relate to the presently claimed invention, the evidence proffered in support of the sales is meager and unpersuasive. While Appellant has demonstrated some amount of commercial sales, when weighing the probity of the success of such sales together with the prior art of record as a whole, the most reasonable conclusion based on the record 10 Appeal 2016-005960 Application 13/549,583 before us is that claim 1 would have been obvious at the time of Appellants' invention. For the foregoing reasons, we sustain the rejection of claims 1---6, 8, and 11 as having been obvious over Seago '322 and Seago '570. B. Obviousness based on Seago '322, Seago '570, and Zafiroglu (Claims 9 and 10) Appellant does not argue for the patentability of dependent claims 9 and 10 separately from their common parent claim 1. See Appeal Br. 7-13. Accordingly, for the reasons provided above concerning claim 1, we sustain the rejection of claims 9 and 10 as having been obvious over Seago '322, Seago '570, and Zafiroglu. DECISION The Examiner's rejections of claims 1-6 and 8-11 under 35 U.S.C. Â§ 103(a) are affirmed. 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)(l )(iv). AFFIRMED 11