Purple Innovation, LLC

Patent Trials and Appeals Board

Mar 24, 2022

2021005524 (P.T.A.B. Mar. 24, 2022)

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. 15/611,567 06/01/2017 Tony M. Pearce 54023-3015USD1 1065 128128 7590 03/24/2022 Dentons Durham Jones Pinegar 3301 N. Thanksgiving Way, Suite 400 Lehi, UT 84043 EXAMINER SMITH, JACOB A ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 03/24/2022 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): djp.ipmail@dentons.com stacia.boren@dentons.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TONY M. PEARCE Appeal 2021-005524 Application 15/611,567 Technology Center 3700 Before LISA M. GUIJT, MICHAEL L. WOODS, and PAUL J. KORNICZKY, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-5, 7-10, 16, 17, and 19-23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Purple Innovation, LLC. Appeal Br. 1. Appeal 2021-005524 Application 15/611,567 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to “Methods for Packing, Shipping, and Unpacking a Cushion.” Spec., Title. Claims 1 and 16 are the independent claims on appeal, and claim 1, reproduced below, illustrates the claimed subject matter. 1. A method of packaging and shipping a cushion, the method comprising: supplying a cushion to a roll packing machine; compressing the cushion into a cylindrical shape using the roll packing machine to provide a compressed cushion; introducing the compressed cushion into a sleeve preventing expansion of the cushion; enclosing the compressed cushion and the sleeve preventing expansion of the cushion in a cylindrical bag with: a tubular sleeve of the cylindrical bag surrounding an entirety of the compressed cushion; a first end piece of the cylindrical bag covering a first longitudinal end of the compressed cushion; a second end piece of the cylindrical bag covering a second longitudinal end of the compressed cushion; and at least one handle attached to the tubular sleeve proximate to each of the first longitudinal end and the second longitudinal end enabling transport of the cylindrical bag and the compressed cushion therein; and shipping the compressed cushion to a customer in the cylindrical bag without inserting the cylindrical bag in any other container. Appeal 2021-005524 Application 15/611,567 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Lewis US 6,739,107 B1 May 25, 2004 McLaughlin US 2005/0284775 A1 Dec. 29, 2005 Holbrook US D655,085 S Mar. 6, 2012 Riemer US 6,126,054 Oct. 3, 2000 THE REJECTIONS I. Claim 7 stands rejected under 35 U.S.C. § 112(b) as indefinite. II. Claims 1-5, 7, 16, 17, and 20-23 stand rejected under 35 U.S.C. § 103 as unpatentable over Lewis and Holbrook.2 III. Claims 8-10 stand rejected under 35 U.S.C. § 103 as unpatentable over Lewis, Holbrook, and McLaughlin. IV. Claim 19 stands rejected under 35 U.S.C. § 103 as unpatentable over Lewis, Holbrook, and Riemer. OPINION Rejection I Claim 7 depends from independent claim 1 and recites “the mattress,” which the Examiner correctly finds lacks antecedent basis. Final Act. 3; see also Ans. 3. Appellant does not dispute the Examiner’s conclusion that claim 3 is, therefore, indefinite. Final Act. 3; Appeal Br. 4-10. Thus, we summarily affirm the Examiner’s rejection of claim 7 as indefinite. See 2 We interpret the inclusion of claim 18 and the omission of claim 17 in the Examiner’s summary statement of the rejection to be typographical errors, as there is no claim 18 pending in this appeal, and the Examiner sets forth a detailed rejection of claim 17 in the body of the rejection. Final Act. 4, 12- 13. Appeal 2021-005524 Application 15/611,567 4 Manual of Patent Examining Procedure (MPEP) § 1205.02 (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer.”). Rejection II Regarding independent claim 1, the Examiner finds that Lewis teaches the steps of compressing a cushion into a cylindrical shape using a roll packing machine and introducing the compressed cushion into a sleeve (i.e., outer cover 2). Final Act. 4 (citing Lewis 4:45-60, 8:55-9:1, Figs. 10-16). The Examiner finds that Lewis fails to disclose a cylindrical bag, as claimed, and relies on Holbrook for teaching a tubular sleeve of a cylindrical bag surrounding an entirety of a compressed cushion, with first and second end pieces covering a first and second longitudinal ends of the compressed cushion, and at least one handle attached to the tubular sleeve proximate to each of the first and second longitudinal ends, as claimed. Id. at 5-6 (citing Figs. 1-18). The Examiner also finds that modifying Lewis, in view of Holbrook, “would replace the cardboard box,” as depicted in Lewis’s Figures 16-18, “with the cylindrical bag,” as depicted in Holbrook, “without inserting the compressed and packaged mattress into any other container,” as required by claim 1. Id. at 6-7. The Examiner reasons that “one of ordinary skill in the art would recognize that the packaging of [Lewis’] mattress into the cardboard box presents transportation and logistical problems,” in that “[t]here is clear wasted space illustrated in [Figure 17 of Lewis] when packaging using a carboard box, and there are subsequently no structures to grasp the box.” Id. at 7. The Examiner further reasons that Appeal 2021-005524 Application 15/611,567 5 it would have been obvious . . . to have modified Lewis to incorporate the teachings of Holbrook to include a mattress inserted into a sleeve which is then inserted into a cylindrical bag with the motivation of simplifying packaging and providing a way to easily transport the mattress using the handle attached to the bag of Holbrook. Id. at 7. Appellant argues that “the bag of Holbrook couldn’t be used in place of the plastic tubular sleeve 2 of Lewis in the roll packing system 10 of Lewis.” Id. at 6-7; Reply Br. 3-4. However, Appellant’s argument does not address the Examiner’s rejection, which does not replace Lewis’ outer cover 2 with Holbrook’s flexible storage container for mattress pads, but rather, replaces Lewis’ cardboard box as depicted in Lewis’ Figure 17. See Ans. 6 (“the cardboard box of Lewis could be replaced with the cylindrical bag of Holbrook”). Appellant also concludes that “there would have been no apparent reason for one of ordinary skill in the art to have combined teachings and/or suggestions from Lewis and Holbrook in the manner the Examiner as asserted.” Appeal Br. 7. Again, however, Appellant’s argument does not apprise us of error in the reasoning articulated by the Examiner supra. See also Ans. 6-7 (again reasoning that substituting Lewis’ cardboard box with Holbrook’s flexible storage container for mattress pads minimizes wasted space and the handles for gripping are also advantageous for transporting or moving the mattress). Appellant further argues that “neither Lewis nor Holbrook teaches shipping a rolled, compressed cushion or any other item in a cylindrical bag without any further packaging, such as a cardboard box,” as required by independent claims 1 and 16. Appeal Br. 7. We agree with the Examiner Appeal 2021-005524 Application 15/611,567 6 that the proposed combination replaces a cardboard box used for shipping with Holbrook’s flexible storage container for mattress pads, such that the resulting assembly may be shipped. In other words, Appellant does not provide persuasive argument or evidence as to why Holbrook’s flexible storage container is not capable of being used as a shipping container for a mattress pad. Accordingly, we sustain the Examiner’s rejection of independent claim 1. Because the Examiner relies on the same findings and Appellant presents the same arguments for the rejection of independent claim 16, we, for essentially the same reasons as stated supra, sustain the Examiner’s rejection of independent claim 16. Final Act. 10-12; Appeal Br. 6-8. Further, Appellant does not present any arguments for the dependent claims apart from independent claim 1 supra, and therefore, for essentially the same reasons as stated supra, we also sustain the Examiner’s rejection of claims 2-5, 7, 17, and 20-23. Rejection III Appellant argues that the Examiner’s reliance on McLaughlin in the rejection of claims 8-10 does not cure the deficiencies in the Examiner’s rejection of independent claims 1 and 16. Appeal Br. 8-9. However, as set forth supra, we do not find the Examiner’s findings or reasoning deficient, and therefore, we also sustain the Examiner’s rejection of claims 8-10. Rejection IV Claim 19 depends from independent claim 16 and further requires “at least one handle being coupled between a pair of reinforcing straps circumferentially surrounding the tubular sleeve.” Appeal Br., Claims App. 4. The Examiner finds that Riemer teaches this claim limitation. Final Act. Appeal 2021-005524 Application 15/611,567 7 18 (citing an Examiner’s annotated Figure 4 of Riemer). The Examiner reasons that it would have been obvious to include the straps of Riemer as reinforcing straps about Lewis’ flexible storage container, as modified by Holbrook, to “increase the longevity of the bag and handle.” Final Act. 11. Appellant argues that the Examiner’s reliance on Riemer in the rejection of claim 19 does not cure the deficiencies in the Examiner’s rejection of independent claim 16. Appeal Br. 9. However, because we do not find the Examiner’s findings or reasoning deficient, as set forth supra, we also sustain the Examiner’s rejection of claim 19. In addition, Appellant argues that “[w]hile it is noted that the handles 8 of the bag 1 of Riemer include portions that surround parts of the tubular section 5 of that bag 1, Riemer does not teach or suggest that those portions of the handles 8 reinforce the tubular section 5.” Appeal Br. 10. However, we find that, notwithstanding an express teaching in Riemer, Riemer’s handles 8 would inherently reinforce Lewis’ flexible storage container, as modified by Holbrook, just as Appellant’s reinforcing straps 122 do the same. See, e.g., Spec., Fig. 3. Where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Accordingly, we sustain the Examiner’s rejection of claim 19. CONCLUSION The Examiner’s rejections are affirmed. Appeal 2021-005524 Application 15/611,567 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 7 112(b) Indefiniteness 7 1-5, 7, 16, 17, 20-23 103 Lewis, Holbrook 1-5, 7, 16, 17, 20-23 8-10 103 Lewis, Holbrook, McLaughlin 8-10 19 103 Lewis, Holbrook, Riemer 19 Overall Outcome 1-5, 7-10, 16, 17, 19- 23 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED