SEALY TECHNOLOGY LLC(OWNER) et al.

Patent Trials and Appeals Board

Jul 1, 2020

95001540 - (D) (P.T.A.B. Jul. 1, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
95/001,540 02/08/2011 D622996 SMCY-172-602 8383
23342 7590 07/01/2020
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: 22 - IP Docketing
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
HYDER, PHILIP S
ART UNIT PAPER NUMBER
2917
MAIL DATE DELIVERY MODE
07/01/2020 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

v.

SEALY TECNHOLOGY LLC
Patent Owner

____________________

Appeal 2020-002736
Reexamination Control 95/001,540
Patent US D622,996 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 on September 7, 2010 to Sealy Technology LLC.
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Application 95/001,540

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STATEMENT OF CASE
Patent Owner appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of the claim. Requester cross-appeals under 35 U.S.C. § 134 from
the Examiner’s decision not to adopt certain rejections of the claim. We
have jurisdiction under 35 U.S.C. § 6(b).
Oral arguments were heard in this case on May 6, 2020, a record of
which will be entered into the record in due course.
We AFFIRM.

THE INVENTION
Appellant’s claim is directed generally to “ornamental designs for a
pillow-top mattress design.” Claim. The figures illustrate the claimed
subject matter.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tenuta, US 5,428,852, issued July 4, 1995.
Antares Model of Pirelli, Pirelli Commercial Catalog, 1982.
Somma Nouveau 500, Specialty Bedroom, summer 1996.
King Koil, 1999.
Lemoyne, Ultimate Pillowtop, 2001
Restonic Mattress, Bedding Yearbook, 2004.

REJECTIONS
The Examiner made the following rejections:
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The claim stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over King Koil, Antares, Tenuta, and Somma Nouveau. RAN
2.
The claim stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Somma Nouveau, Antares, Tenuta, and King Koil. RAN
6.
The claim stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Restonic Mattress, King Koil, Antares, and Tenuta. RAN
7.
The claim stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lemoyne Ultimate Pillowtop, King Koil, Antares, and
Tenuta. RAN 8.
ANALYSIS
In order for the Examiner’s rejections to stand, we must first address
whether the references can be properly considered as prior art publications.
While we agree with Requester that Pirelli, which depicts the Antares model
mattress, has all indications of being a commercial catalog that could have
been distributed to mattress retailers for use in selling Pirelli mattresses,
such indications are insufficient to actually qualify Pirelli as prior art. We
first note that, although Pirelli has a date on its face of 1982, this is
essentially hearsay as the document cannot be relied upon for such factual
matters. While we would stop short of Patent Owner’s assertion that actual
distribution to the public need be shown, we still require some kind of
evidence that this document was actually available to the public.
Requester’s Declaration of Fabio Formenti submitted for the purpose of
establishing that this condition is met, fails on its own for numerous reasons.
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First, Mr. Formenti’s Declaration evidences that he was not even
involved in the mattress industry until 1986, four years after Pirelli’s alleged
status as prior art. Formenti Decl. ¶ 2. Next, all Mr. Formenti can say
regarding the document is that it is “the kind of catalog distributed widely at
the time by Pirelli and other mattress manufacturers, who used and still use
this kind of catalog.” Id. ¶ 4. Neither of these facts is sufficient to show that
Pirelli is actually a catalog that was distributed to the public in 1982. At
best, we are left with evidence of it looking like something that may have
been distributed, but no evidence that it is the actual Pirelli catalog from
1982.
The Declaration of Mr. Cantaluppi, however, along with the Formenti
Declaration, is sufficient to establish Pirelli as prior art. Mr. Cantaluppi
states that he was a Pirelli employee via Sapsa Bedding, which is a part of
Pirelli & C. SpA. Cantaluppi Decl. ¶ 2. Although he did not start working
for Sapsa until 1988, as a Pirelli employee, he was capable of determining
past practices at Sapsa/Pirelli. Mr. Cantaluppi states that he received a copy
of Pirelli around 1988. Cantaluppi Decl. 4. He also states that “Pirelli
generally distributed many copies of its mattress catalogs, such as the 1982
Pirelli Catalog, to retailers” and that he understands “that on the order of
thousands of copies of this 1982 Pirelli Catalog were distributed to retailers
of mattress in or about 1982.” Cantaluppi Decl. 5.
Patent Owner’s only argument against Cantaluppi’s statements is that
he was not involved with Pirelli until 1988, which was six years after the
Pirelli Catalog would have been distributed. As noted above, as a Pirelli
employee, Mr. Cantaluppi was capable of familiarizing himself with Pirelli’s
business practices, which he apparently did in stating that it was his
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understanding that thousands of copies were distributed. Patent Owner’s
arguments essentially amount to asserting that Mr. Cantaluppi’s statements
fail to support the document as prior art because he did not have first-hand
knowledge of its distribution. Mr. Cantaluppi states, however, that
thousands of copies of the Pirelli Catalog were distributed. He does not, as
Mr. Formenti states, simply state that this is the type of document that would
have been distributed. We are left with an uncontroverted statement by Mr.
Cantaluppi that the Pirelli Catalog was indeed distributed to retailers.
Although the Formenti Declaration does not add much to the substantiation
of Pirelli as prior art, it is at least corroborative of and not inconsistent with
the Cantaluppi Declaration. As such, the Declarations of Cantaluppi and
Formenti establish that Pirelli was proper prior art.
As to the Lemoyne document, Patent Owner asserts that the only valid
date of Lemoyne is January 26, 2011, which is the date Requester first
printed the document from the Wayback Machine. PO App. Br. 7. As the
Examiner points out, however, “Lemoyne is clearly marked with a copyright
date of 2001.” RAN 17. Furthermore, the Wayback Machine dates
Lemoyne at least as far back as April 24, 2003. We do not agree that the
Wayback Machine/Internet Archive is insufficient as it is a well-known, and
generally reliable, database of known publication dates of material found on
the Internet. As such, we accept Lemoyne as proper prior art as well.
As to the rejection itself, we first must start with claim construction,
the main issue relating to the claim being the necessary type and/or level of
contrast between the handle material and the mattress edges/handle edges.
Having already construed the contrast necessary for Patent Owner’s claim in
our prior related Decision in Appeal 2014-007985, issued March 31, 2015
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(“Dec.”), we maintain that the proper construction of contrast remains “one
of differing appearance from the rest of the mattress…[such 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. The Examiner used this
construction in making the rejections and, as such, the Examiner used the
proper construction of the claim.
Further, as to claim construction, we also note, as stated above, that
the contrast necessary is only between the handle material and
mattress/pillowtop edges and handle edges. Patent Owner has disclaimed
the body of the mattress and so the only parts of the mattress that are
actually part of the claim are the mattress edges and handle edges, as well as
the handle material. This is clear from Patent Owner’s figures where, for
example, Figure 1 shows the corners of the mattress in dashed lines and
there is no shading, except on the handles. Figure 4 depicts the buttons in
dashed lines with no shading on any other portion of the mattress top. The
remaining figures also contain similar drawing conventions showing that the
design itself involves substantially the contrast between the edging and the
central handle material with the mattress material being disclaimed.
We note that Patent Owner admits that neither Pirelli nor Tenuta is
needed in the Examiner’s rejections because the claim is not limited to twin
mattresses, for which the Examiner uses Pirelli, nor is it limited to
mattresses having no stitching on the pillow top, for which the Examiner
uses Tenuta. PO App. Br. 22. As such, we limit our discussion to the
primary references.
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Patent Owner next asserts that none of the cited references are
“basically the same” as the claimed design. PO App. Br. 15. Regarding
King Koil, Patent Owner asserts that “the light metallic color throughout all
of the features of the mattress is a generally monochromatic mattress.” PO
App. Br. 16. This argument ignores our construction that contrast can be
differing fabric, texture, etc. Patent Owner’s argument essentially limits
contrast only to color. We agree with Requester that King Koil “plainly
includes horizontal and vertical edging of a light color and different texture
that stands out from, and is clearly visible against, the border and other
portions of the mattress.” Req. Resp. Br. 10. As such, King Koil exhibits
the contrast necessary to meet the claim.
We also note that, even if we were to accept Patent Owner’s argument
with regard to color contrast, Pirelli, via both the Antares mattress, used by
the Examiner, and the Composit mattress, which is not asserted by the
Examiner, show mattress and handle edges with stark contrast in color
between the main mattress fabric and the edging. Our affirmance of the
rejections does not rely on this type of contrast, but it is clear that such
contrast already existed in the prior art well before Patent Owner’s design.
As to Somma Nouveau, Patent Owner asserts similar arguments as
those regarding King Koil. PO App. Br. 17. As with King Koil, Patent
Onwer asserts that “Somma Nouveau shows a white-colored mattress that
includes both mattress fabric as well as any edging or seams” such that it “is
a generally monochromatic mattress.” Id. For the same reasons as stated
above, we do not agree that contrast is limited to color. Patent Owner makes
similar arguments regarding contrast for both Restonic and Lemoyne as
well. PO App. Br. 18–20. We reject these arguments for the same reasons.
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Regarding Lemoyne and Restonic, Patent Owner further argues that
Lemoyne and Restonic fail as Rosen references because they do not show
handles on the ends of the mattress. As stated in our prior related Decision,
it would have been obvious at the time to a designer of ordinary
skill to include handles on the end in a manner matching the
handles that are present. The prior art is replete with mattresses
showing handles on both the ends and the sides and, given that
this is the only element missing from these two references and
that these two references already include handles on the sides,
this is also merely a trivial difference that would have been
obvious to include.

Dec. 6. As such, we do not find this argument persuasive.
Patent Owner also argues that one of skill in the art would not have
combined the references as suggested by the Examiner. First, we note that
Patent Owner appears to acknowledge that the secondary references are not
even required for the rejection, as Patent Owner has disavowed claim
coverage to mattress-size and to specific pillowtop design. Likewise, Patent
Owner does not challenge that the sizing of the handles is an issue in any of
the combinations. As such, the rejections essentially boil down to the main
references in each rejection.
Lastly, with regard to Patent Owner’s secondary considerations, we
agree with the Examiner for the reasons articulated that no nexus has been
properly established between the evidence presented and the design at issue.
See RAN 16. Furthermore, we note that Patent Owner’s evidence is
generally directed to the overall appearance of the mattress rather than the
actual claimed design, which as noted above, pertains only to the edging and
the handles. Accordingly, we are not persuaded by Patent Owner’s evidence
of secondary considerations.
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As to Requester’s cross-appeal, although we generally agree with
Requester that additional rejections may have been proper based on the
submitted prior art, having affirmed the Examiner’s rejections, any such
rejections would appear to be, essentially, cumulative rejections.
Furthermore, were we to introduce new grounds of rejection, the
reexamination proceeding would return to the Examiner for another round of
examination and, likely, another appeal. Rather than further delay the
conclusion of this case, we decline to reach Requester’s cross-appeal and
consider the Examiner’s rejections sufficient to resolve the case.

DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
the claim as unpatentable. We also do not reach the merits of Requester’s
cross-appeal.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
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An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

AFFIRMED

For PATENT OWNER:

KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: 22 - IP Docketing
1100 Peachtree Street
Suite 2800
Atlanta GA 30309

For THIRD PARTY REQUESTER:

PAUL, WEISS, RIFKIND, WHARTON & GARRISON LLP
2001 K Street NW
Washington, DC 20006-1047