Ex Parte D622531 et al

Patent Trial and Appeal Board

Mar 29, 2019

95001549 (P.T.A.B. Mar. 29, 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.
95/001,549 02/17/2011 D622531 SMCY-172-603 1917
23342 7590 03/29/2019
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: 22 - IP Docketing
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
BUGG, GEORGE A
ART UNIT PAPER NUMBER
2911
MAIL DATE DELIVERY MODE
03/29/2019 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
Requester and Appellant

v.
SEALY TECHNOLOGY LLC
Patent Owner and Respondent
____________________

Appeal 2018-003420
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 REHEARING

1 Issued to Morrison et al. on August 31, 2010.
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Reexamination Control 95/001,549
US Patent D622,531 S

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BACKGROUND
On March 31, 2015, the Patent Trial and Appeal Board ("the Board")
entered a Decision reversing the Examiner's decision to not reject the claim.
The Board thus entered a new ground of rejection of the claim pursuant to
37 C.F.R. § 41.77(b). The Decision provided the Patent Owner with two
options under 37 C.F.R. § 41.77(b): (1) file a response requesting reopening
of prosecution before the examiner; or (2) request that the proceeding be
reheard before the Board upon the same record. On May 29, 2015, the
Patent Owner filed a response requesting that prosecution be reopened
before the Examiner. The Third Party Requester ("Requester") filed
comments on the Patent Owner's response on June 29, 2015. The Examiner
issued his Determination on September 12, 2017, and the Patent Owner and
Requester each filed Comments on the Determination on October 12, 2017.
Patent Owner and Requester then each filed comments to each other’s
Comments on the Determination on November 13, 2017. We entered a
Decision (under 37 C.F.R. § 41.77(f)) on June 1, 2018, affirming the
Examiner’s Determination, which rejected the claim. Patent Owner then
filed a Request for Rehearing (Req.) and Requester filed its Comments
thereto.
ANALYSIS
Claim Construction
Patent Owner presents several arguments asserting that the Board
misapprehended or overlooked evidence relating to claim construction and
that the claim construction should be altered in accord with its requested
claim construction argued in both prior appeals. Req. 4–9. Requester is
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correct, however, that any arguments requesting rehearing on our claim
construction were waived “by not seeking rehearing of the Board’s 2015
Decision on Appeal.” Comments 4. Our claim construction has stayed
consistent throughout this proceeding and if Patent Owner had an issue with
that construction, the proper time to contest it would have been after our
original Decision. Furthermore, as Requester details, Patent Owner’s own
prior statements support our construction and were not taken out of context.
See Comments 3–4. Accordingly, we decline to alter our claim construction.
Visual Impression
Patent Owner next argues that we misapprehended the correct visual
impression created by the patented design as a whole. Req. 9–11. We first
note that most, if not all, of this argument seeks to have us change our
construction of the term “contrast,” which as noted above, we decline to do.
As to the correct visual impression, Patent Owner’s arguments contradict its
own prior statements as to what contrast means. Patent Owner asserts that
“the claimed design as a whole includes a unified design that uses contrast
between certain edges and the remainder of the mattress to unify the
appearance of tape and handle edges of the mattress and thus provide a
continuous appearance on each of those edges and the two handles on each
of the four sides of the mattress.” Req. 10.
This is allegedly juxtaposed with the Europa mattress, solely because
“it is an all-white mattress” that nowhere shows contrast. Req. 11. This
directly contradicts Patent Owner’s previous statement that the claimed
design “broadly cover[s] contrasting surfaces unlimited by colors.”
Comments 3 (citing PO Resp. Br. 5, 7). Patent Owner cannot have it both
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US Patent D622,531 S

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ways. The mere fact that Europa is all white does not preclude that mattress
from having contrast. We agree that Europa does not contrast in color, but
there is contrast in fabric pattern/texture such that it properly meets our
construction and creates the same overall visual impression as the claimed
design. Again, Patent Owner’s arguments require an improperly narrow
understanding of the term contrast, which we have already rejected twice
previously.
Prior Art Status
Patent Owner also continues to challenge our findings relating to the
status of the various references as prior art. As Requester states, Sealy’s
request fails identify any arguments or authority the Board allegedly
“misapprehended or overlooked.” Comments 9. Sealy merely restates prior
arguments, which we have already rejected. Accordingly, we decline to
change our Decision relating to the status of the references as prior art.
Secondary Considerations
Patent Owner asserts that we overlooked secondary considerations
evidence, specifically that of copying. Req. 13. As stated by Requester,
however, we did not overlook evidence of copying, we merely agreed with
the Examiner’s general determination as to secondary considerations and
then expounded on certain aspects. Dec. 5–6. We commented specifically
on commercial success, but endorsed the Examiner’s general findings as a
whole, which included the overall lack of nexus finding as well as
acknowledging Patent Owner’s assertions as to copying. Ex’r Det. 7–8. As
such, we did not overlook any secondary consideration evidence and decline
to change our Decision.
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US Patent D622,531 S

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Conclusion
For the reasons stated above, we DENY Patent Owner’s Rehearing
Request.
DENIED

PATENT OWNER:

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

THIRD PARTY REQUESTER:

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