Ex Parte D622088 et al

Patent Trial and Appeal Board

Aug 28, 2018

95001535 (P.T.A.B. Aug. 28, 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.
95/001,535 01/31/2011 D622088 062448-0933412 8469
23342 7590 08/29/2018
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: 22 - IP Docketing
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
CALABRESE, MARY ANN
ART UNIT PAPER NUMBER
2913
MAIL DATE DELIVERY MODE
08/29/2018 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
v.
SEALY TECNHOLOGY LLC
____________________

Appeal 2018-004259
Reexamination Control 95/001,535
Patent US D622,088 S1
Technology Center 2900
____________________

Before DANIEL S. SONG, JOHN C. KERINS, and BRETT C. MARTIN,
Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued on August 24, 2010 to Sealy Technology LLC.
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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 July 25, 2018, a record of
which will be entered into the record in due course.
We REVERSE and enter NEW GROUNDS OF REJECTION.

THE INVENTION
Appellant’s claim is directed generally to “ornamental designs for a
mattress.” Claim. The figures are illustrative of the claimed subject matter.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Somma Nouveau 500, Specialty Bedroom, summer 1996.
Pirelli, Pirelli Commercial Catalog, 1982.

REJECTION
The Examiner made the following rejection:
The claim stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pirelli and Somma Nouveau 500. Ans. 2.

ANALYSIS
In order for the Examiner’s rejection to stand, we must first address
whether the references can be properly considered as prior art publications.
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While we agree with Requesters that Pirelli 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, while 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 for numerous reasons.
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 Dec. § 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.
Mr. Formenti also states that he “received a copy of this catalog from
a former Pirelli employee.” Id. Had we been presented with a declaration
from that employee stating that Pirelli maintained a library of its
commercially distributed catalogs and that Pirelli is a true and accurate copy
of the actual 1982 catalog, which was publicly available, then we might be
able to properly authenticate it as a printed publication. Absent some
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evidence similar thereto, however, we cannot accept Pirelli as a printed
publication. As such, the Examiner’s rejection fails.2
Turning to Requester’s cross-appeal, 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 Decision (“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. Given this construction of contrast, we conclude that the Examiner
excluded numerous references that contain sufficient contrast, albeit not to
the level desired and argued by Patent Owner.
Further, as to claim construction, we also note, as stated above, that
the contrast necessary is only between the handle material and mattress
edges/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, Fig. 1 shows the
corners of the mattress in dashed lines and there is no shading, except on the
handles. Furthermore, Figs. 2 and 3 depict the top and corners of the
mattress as dashed lines, also with shading only on the handles. Fig. 4
depicts the buttons in dashed lines with no shading on any other portion of

2 We note that if, during further prosecution, a declaration sufficient to
establish Pirelli as a printed publication is submitted, we would endorse
reinstating the Examiner’s rejection.
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the mattress top. The remaining figures also contain similar drawing
conventions showing that the design itself is only the contrast between the
edging and the central handle material with the mattress material being
disclaimed.
Given this construction, we agree with Requester that the Examiner
improperly excluded Somma Nouveau 5003 as having the necessary contrast
and that it, therefore, anticipates Patent Owner’s claim. Somma Nouveau
500 clearly shows edging/piping that is darker in color than the center
material of the handles as well as being of a different material sufficient to
show contrast. Somma Nouveau also discloses the requisite handles on both
sides and ends of the mattress.
Ad Trends/Art Van likewise shows significant contrast in the handle
material and edging, while lacking handles on all sides. Combining Ad
Trends/Art Van with Somma Nouveau results in the claim being
unpatentable under 35 U.S.C. § 103. As stated in our prior 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.

3 Patent Owner has challenged the status of Somma Nouveau as prior art, but
unlike Pirelli, the Somma Nouveau advertisement appeared in a trade
publication significantly prior to the critical date, which is sufficient proof to
establish it as a printed publication. Furthermore, we find sufficient the use
of the Internet Archive to substantiate a reference as prior art, which
Requester has sufficiently provided. Req. Resp. Br. 6.
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Dec. 6. As such, we enter new grounds of rejection at least upon Somma
Nouveau as anticipatory, and in combination with Ad Trends/Art Van as
obvious.
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 Ans. 12–15. 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.

DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject the claim as unpatentable over Pirelli and Somma Nouveau 500 and
enter New Grounds of Rejection as stated above.
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
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section, and for submitting comments under paragraph (c) of this section
may not be extended.
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).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that "[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review." Correspondingly, no portion of the decision is final for
purposes of judicial review. For further guidance on new grounds of
rejection, see 37 C.F.R. § 41.77(b)–(g). The decision may become final
after it has returned to the Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file
a response requesting reopening of prosecution
before the examiner. Such a response must be either
an amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both.
(2) Request rehearing. The owner may
request that the proceeding be reheard under
§ 41.79 by the Board upon the same record. . . .
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Any request to reopen prosecution before the Examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected."
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the Patent Owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
Requester may file comments in reply to a Patent Owner response. 37
C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be
limited in scope to the issues raised by the Board's opinion reflecting its
decision to reject the claims and the Patent Owner's response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the Patent Owner and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b) for
all Patent Owner responses and Requester comments is required.
The Examiner, after the Board's entry of a Patent Owner response and
Requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board's rejection is maintained or has been overcome. The
proceeding will then be returned to the Board together with any comments
and reply submitted by the Patent Owner and/or Requester under 37 C.F.R. §
41.77(e) for reconsideration and issuance of a new decision by the Board as
provided by 37 C.F.R. § 41.77(f).
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The Requester may also request rehearing under 37 C.F.R. § 41.79, if
appropriate. However, the Board may elect to defer issuing any decision on
such request for rehearing until such time that a final decision on appeal has
been issued by the Board.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956.

REVERSED; 37 C.F.R. § 41.77(b)

pgc

Appeal 2018-004259
Application 95/001,535
10

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