Application of Carletti, Patent Appeal No. 7039.

• Decision Date: 19 March 1964
• Docket Number: Patent Appeal No. 7039.
• Citation: 140 USPQ 653,328 F.2d 1020
• Parties: Application of Albert A. CARLETTI and Welsh C. WHITTLESEY.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

140 USPQ 653, 328 F.2d 1020 (1964)

Application of Albert A. CARLETTI and Welsh C. WHITTLESEY.

Patent Appeal No. 7039.

United States Court of Customs and Patent Appeals.

March 19, 1964.

Herbert Berl, Washington, D. C., for appellants.

Clarence W. Moore, Washington, D. C. (George C. Roeming, Washington, D. C., of counsel), for the Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, SMITH, and ALMOND, Judges.

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of the claim in an application for a design patent, serial No. 56,122, filed May 28, 1959, for "GASKET."

We do not agree with the rejection predicated on the two prior art references because of obviousness of the design under 35 U.S.C. 103.

The cited references are:

Mixer 301,512 July 8, 1884 Thomas Somerville Co. Catalog No 52A, (c) 1952, page 136, upper left hand corner, spud washer.

The washer of the Somerville Co. catalog (Lavelle Flanged Spud Washer) has a radially-extending flange and a cylindrical portion around the opening, which portion is much higher than the radial flange is wide. There are no ribs or grooves anywhere on it. It does not have even the general proportions of appellants' washer and in no way resembles it in appearance.

The Mixer patent of 1884 on a pipe coupling discloses an absolutely flat lead washer to be inserted between two pipeend "coupling plates" on which plates there are concentric circular corrugations. Only when the pipe coupling is assembled are grooves impressed in the flat lead washer, which is never seen again until the assembly is broken down, if it ever is. Were a rubber washer used in place of the lead, moreover, upon disassembly it would again be flat, due to its resiliency. There is, therefore, no realistic disclosure of a washer or gasket as a separate article having any grooves or ribs. Only the spent lead washer is shown to have a surface other than flat. Neither do we find the slightest hint in this patent of any "innermost rib * * * fractionally higher than the others resulting in a slightly deeper groove around it."

Even combining the reference disclosures, therefore, fails to suggest appellants' design.

One of the examiner's principal grounds of rejection was that the differences between appellants' gasket and the prior art, to which differences we must look in deciding whether patentable invention exists, are dictated by functional requirements, "i. e., to make the article fit the place where it is to be used and to increase the functional utility thereof rather than to appeal to the esthetic sense." We have quoted from the examiner's final position as stated in his Answer. Cases in support of this rejection were cited. The board affirmed this rejection saying:

"The instant design differs from the Somerville publication essentially by the plurality of concentric annular ribs and by the recessed groove. These features, however, are added to the Somerville citation disclosure essentially for purely functional purposes, the ribs to effect better sealing action and the groove primarily to prevent a fileting action in the mold. It has been held in Court decisions including Connecticut Paper Products Co. -vs- New York Paper Co. 4 Cir., 127 F.(2d) 423, 53 USPQ 271, that the addition of features placed upon an old design for purely functional purposes does not ordinarily render a design patentable. Emphasis added.

"The Examiner\'s rejection of the appealed claim as being unpatentable over the reference is sustained."

It is thus seen that the functionality of the elements asserted to distinguish the design from the prior art — as distinguished from the obviousness of those features — was a ground, if not a principle ground, of rejection. The Patent Office Solicitor's brief takes the same position.

While it cannot be said that the Patent Office has made out an iron-clad case of the functionality of the features relied on for patentability, more than a good case has been made out and the appellants have failed to refute it. In the first place we have in the record the military specification covering this gasket, MILP-40068, 9 June 1959, containing engineering drawings in great detail, specifying the exact position, dimensions, and tolerances of the grooves and ribs etc., without the slightest suggestion that they serve in any way as ornamentation. In the second place, appellants' brief says:

"The design was created at the U. S. Army Quartermaster Research and Engineering Center, Natick, Massachusetts, in the course of appellants\' employment by the Government of the United States as technologists. Its intended use is as a component of a closure assembly for containers, such as gasoline drums."

The record further shows such drums to be the common 55 gal. drums and the gasket to be for the threaded plug which closes the bung hole therein.

It seems naive in the extreme to believe that anyone would try to "ornament" the rubber gasket on the under side of the bung cap for a gasoline drum, notwithstanding the seriocomic...