95001535 - (D) (P.T.A.B. Mar. 28, 2019)

Ex Parte D622088 et al

Patent Trials and Appeals BoardMar 28, 2019

95001535 - (D) (P.T.A.B. Mar. 28, 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. 95/001,535 01/31/2011 D622088 062448-0933412 8469 23342 7590 03/28/2019 KILPATRICK TOWNSEND & STOCKTON LLP Mailstop: 22 - IP Docketing 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER VEYNAR, CARON D ART UNIT PAPER NUMBER 2913 MAIL DATE DELIVERY MODE 03/28/2019 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 Patent Owner and Appellant v. SEALY TECNHOLOGY LLC Requester and Respondent ____________________ Appeal 2018-004259 Reexamination Control 95/001,535 Patent US D622,088 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 on August 24, 2010, to Sealy Technology LLC. Appeal 2018-004259 Application 95/001,535 2 STATEMENT OF CASE Patent Owner appealed under 35 U.S.C. § 134 from the Examiner’s rejection of the claim. Requester cross-appealed under 35 U.S.C. § 134 from the Examiner’s decision not to adopt certain rejections of the claim. Oral arguments were heard in this case on July 25, 2018. We entered a Decision on August 29, 2018 reversing the Examiner’s rejection based on Pirelli and Somma Nouveau 500 and entered new grounds of rejection. Patent Owner requested rehearing (“Req.”) and Requester entered its Comments. ANALYSIS Claim Construction Patent Owner again challenges our construction of the term contrast. Req. 4–10. We have upheld this construction twice in the related Reexamination Control 95/001,549 and decline to change it now. Anticipation Patent Owner argues that our anticipation analysis is truncated and that we failed to determine whether the two designs are substantially the same. Req. 11. Our original analysis, without explicitly stating so, was from the perspective of the ordinary observer as to the necessary contrast discussed therein. Patent Owner’s arguments also fail to acknowledge that the elements addressed are the only elements in the claim as the rest of the mattress has been disclaimed. Thus, our allegedly truncated analysis is sufficient as the overall impression to an ordinary observer is only that as determined by the presence or absence of the claimed elements. Accordingly, we decline to change our conclusion on anticipation. Appeal 2018-004259 Application 95/001,535 3 Visual Impression Most of Patent Owner’s arguments seek to have us change our construction of the term “contrast,” which we decline to do. Patent Owner further asserts that because Somma Nouveau is an all-white mattress that it cannot have the requisite contrast. Req. 13. This again ignores that contrast is not limited to color and can be due to contrasting fabric/pattern. Even in the low quality image of Somma Nouveau, clear contrast is depicted between the piping and center handle material even though they are both white. Accordingly, we did not misapprehend the proper overall impression of the design in determining anticipation. Obviousness As to obviousness, Patent Owner first asserts that Ad Trends/Art Van does not cure deficiencies of Somma Nouveau. Req. 14. First, Somma Nouveau technically does not have deficiencies as it is properly an anticipatory reference. As to the combination, the only thing lacking from Ad Trends/Art Van is handles on the end of the mattress. The combination merely uses the handle placement in Somma Nouveau to augment the handles already found in Ad Trends/Art Van. Patent Owner argues that this changes the overall impression and one of skill in the art would not have made this change, but this belies the fact that, as shown in Somma Nouveau, handles on all sides was already known and also that the handles would be of similar design as those on the sides. Accordingly, the combination would teach a higher level of contrast as shown in Ad Trends/Art Van, but with handles all around. It is this combination that provides the overall impression, which makes the claim obvious. Appeal 2018-004259 Application 95/001,535 4 Regarding image quality, we agree with Requester that Sealy’s arguments attempt to replace the actual mattresses for what is shown in the prior art publications. Comments 11. As Requester states, “what matters is what the printed prior art photographs convey as publications” and what is conveyed by the reference is significantly more than the level of contrast necessary to meet the claims. Id. As to motivation, we first note that Somma Nouveau itself provides motivation for the combination as it contains all of the necessary elements to anticipate. The combination of Ad Trends/Art Van merely enhances the teachings already found in Somma Nouveau. As such, there is no lack of motivation for the proposed combination. Secondary Considerations Requester is correct that “the Board clearly did not ‘misapprehend or overlook’ Sealy’s arguments.” Comments 12. Our Decision endorsed the Examiner’s findings, which fully detailed the bases for finding no nexus. Ans. 12–15. Accordingly, our determination regarding secondary considerations was correct and properly supported. DECISION For the above reasons, we DENY Patent Owner’s request for rehearing. DENIED Appeal 2018-004259 Application 95/001,535 5 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 pgc