Ex Parte D622531 et al

Patent Trial and Appeal Board

Mar 31, 2015

95001549 (P.T.A.B. Mar. 31, 2015)

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.
95/001,549 02/17/2011 D622531 SMCY-172-603 1917
114262 7590 03/31/2015
Black McCuskey Souers & Arbaugh
220 Market Avenue, South, Suite 1000
Canton, OH 44702
EXAMINER
KRAKOWER, SUSAN E
ART UNIT PAPER NUMBER
2917
MAIL DATE DELIVERY MODE
03/31/2015 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 and Appellant

v.
SEALY TECHNOLOGY LLC
Patent Owner and Respondent
____________________

Appeal 2014-007985
Reexamination Control 95/001,549
US Patent D622,531 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 to Morrison et al. on August 31, 2010.
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US Patent D622,531 S

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. §§ 134(b) and 315(a) from the
Examiner’s rejection of the sole claim. We have jurisdiction under
35 U.S.C. § 315(b). The Requester informs us that related patents
D622,088, and D622,996 are each involved in pending inter partes
reexamination proceedings and that in both cases the Examiner has issued an
Action Closing Prosecution rejecting the claim in each of the patents. App.
Br. 2. The Requester further informs us that the parties are involved in
litigation over the '088 and '096 patents in Sealy Technology LLC v.
Simmons Bedding Co., No. 10-cv-702 (M.D.N.C.).
We REVERSE.

THE INVENTION
Patent Owner's invention is directed to "[t]he ornamental design for a
Euro-top mattress design, as shown and described" in the figures of the
Patent.

REFERENCES
The evidence2 relied upon by the Examiner in rejecting the claims on
appeal is:
Doane
Rose

US 2,609,548
US 6,804,848

Sep. 9, 1952
Oct. 19, 2004

2 The remainder of the prior art/evidence in this case amounts to sales
literature and other printed exhibits showing various mattresses of the prior
art. These images are best viewed by visiting the reexamination file for the
patent at issue.
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THE REJECTIONS ON APPEAL
The Examiner declined to adopt the following rejections:
1. Requester requested the claim be rejected under
35 U.S.C. § 102(b) as being anticipated by Exhibits 1-73. RAN 2.
2. Requester requested the claim be rejected under
35 U.S.C. § 103(a) as being unpatentable over Exhibits 1-73. Id.

ANALYSIS
The Requester in this matter submitted a total of 73 prior art exhibits
and requested rejection of the claim over these exhibits as either anticipated
or obvious. The Examiner, in determining the scope of the claim of this
design patent determined that there were a total of six elements that needed
to be present in order for a prior art reference to anticipate or to meet the
criteria of In re Rosen3 in the context of an obviousness analysis. RAN 2–3.
These six elements were described as follows:
1. The mattress has a thick, straight-sided pillow top layer. The
pillow top layer has a flat top surface with piping along the top
edge.
2. The proportion of the pillow top layer is approximately 1/3rd
the thickness of the mattress layer.
3. The pillow top is attached to the mattress with a shared
piping along the bottom of the pillow top layer and the top of
the mattress.
4. There are eight flat vertical handles, distributed two on each
side and two on each end which are located between the top and
bottom piping of the mattress.
5. The horizontal piping along the edges of the top and bottom
of the mattress and along the top flat surface of the pillow top
layer has a contrasting appearance.

3 673 F.2d 388 (CCPA 1982).
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6. The 8 flat vertical handles each have contrasting sides or
edges running vertically with the length of the handles.

Id. at 3.4 The Examiner found that three references meet each of the first
three criteria, namely Exhibits 28, 44, and 64, showing the Europa, Lemoyne
Ultimate Pillow Top, and Beautyrest Primo mattresses, respectively.
The Examiner, however, then determined that none of the references
provided by Requester depicted the presence of eight handles as required by
element 4. RAN 5. All of the sales literature presented by the Requester
shows at most two sides of a particular mattress. It was the Examiner's
position that because the references show only two sides, "no assumption
can be made" that more handles are present. RAN 2. This position led the
Examiner to exclude nearly all of the prior art for failure to show all four
sides, and thus all eight handles. We find this position to be untenable for
multiple reasons. First, the Requester has submitted unrebutted evidence in
the form of an Expert Report of Ed Scott, which states that "a mattress
designer of ordinary skill would have understood that the mattresses shown
in each of the prior art references listed above had matching handles on the
sides opposite to those shown with vertical handles." Expert Report of Ed
Scott, pp. 103-104.
Second, at least for anticipation, the standard of review is whether a
reference is "substantially similar in the eyes of the ordinary observer armed
with the knowledge of the prior art." Int'l Seaway Trading Corp. v.

4 Patent Owner acknowledges that “[t]he Examiner’s recitation of features or
aspects of the ‘531 design claim in the ACP and the RAN is within the
Examiner’s discretion.” Respondent Brief-Patent Owner 5. Elsewhere,
Patent Owner admits that “[t]he Examiner properly construed the ‘531
patent claim in keeping with applicable law.” Id. at 7.
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Walgreens Corp., 589 F.3d 1233, 1237-38, 1240 (Fed. Cir. 2009). The
judgment for anticipation would thus be made when provided the view(s)
shown in the prior art. If a reference shows handles on a side and end, as
would be seen by an ordinary observer, then it follows that that ordinary
observer would judge the similarity based on viewing only one side and one
end.
Regardless, we are persuaded that it is not an unreasonable inference
that, given handles on one side or end, there are matching handles on the
other side or end. We find that the Examiner erred in failing to infer the
presence of handles on opposite sides and ends when the images showed
only two of the four sides, i.e., one end and one side. Nonetheless, because
all four sides are not explicitly shown we decline to deem the claim
anticipated, and will focus on obviousness.
We agree with the Examiner's finding that Exhibits 28, 44, and 64
each include all of the first three elements, although we note that the
Examiner required attachment of the pillowtop, which we find unnecessary,
as long as the visual impression is the same as that provided by the patented
design. We further find that the Chattam & Wells, Inc. literature, showing
the Alexandria mattress (Exhibit 4), and the Aireloom webpage showing the
Heritage mattress (Exhibit 18), also depict the first three elements. Each of
Exhibits 4 and 18 also shows flat handles on both the side and the end (i.e.,
the only sides depicted), and we further infer that each of the opposite sides
and ends, not shown, also includes handles. Therefore, the design
characteristics of each of the five references are thus basically the same as
the claimed design so as to constitute proper Rosen references. Rosen, 673
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F.2d at 391. We further agree with the Requester that the bowed handles of
the Europa mattress (Exhibit 28) "is merely a minor or trivial difference that
does not alter the overall visual impression" and that it would have been
"obvious to a mattress designer to flatten the existing handles of Europa,
especially given the numerous examples of flat handles in the prior art."
App. Br. 28.
We further find that, in the cases of Exhibits 44 and 64, which include
all other elements, but show only handles on the side and not the end, 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.
The Examiner stopped the analysis at element 4 and, therefore, did not
analyze the additional elements 5 and 6, regarding the contrast of the piping
and the handles. Although the Examiner does not make clear exactly what
level of contrast is necessary in elements 5 and 6, due at least to finding the
same product having both contrasting and non-contrasting edges (see App.
Br. 20), we find that the only contrast necessary is one of differing
appearance from the rest of the mattress. Although not an exhaustive list,
this can be achieved by: contrasting fabric, contrasting color, contrasting
pattern, and contrasting texture. Essentially, if the edging of the handle or
the mattress can be seen as being different and thus visually distinguished
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from the rest of the mattress, then that element is contrasting. Clearly, each
of the aforementioned five Exhibits includes contrasting edging/piping of
both the mattress and handles as the edging/piping can be easily
distinguished from the rest of the mattress, thus meeting elements 5 and 6.
For the above reasons, we conclude that the claim of the patent at
issue is obvious over at least Exhibits 4, 18, 28, 44, and 64. We do not
specifically reach the merits of the rejections based on the remaining prior
art.

DECISION
We REVERSE the Examiner’s decision not to adopt the Requester's
proposed obviousness rejections over Exhibits 4, 18, 28, 44, and 64. The
reversal is denominated as NEW GROUNDS of REJECTION.
This decision contains new grounds of rejection pursuant to
37 C.F.R. § 41.77(b), which provides "[a]ny decision which includes a new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review." 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. …
(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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Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

REVERSED; 37 C.F.R. § 41.77(b)

peb

PATENT OWNER:

BLACK McCUSKEY SOUERS & ARBAUGH
220 Market Avenue, South, Suite 1000
Canton, OH 44702

THIRD PARTY REQUESTER:

ROPES & GRAY LLP
Prudential Tower, IPRM - Floor 43
800 Boylston Street
Boston, MA 02199-3600