Application of DuBois, Patent Appeal No. 6395.

• Decision Date: 19 December 1958
• Docket Number: Patent Appeal No. 6395.
• Citation: 262 F.2d 88
• Parties: Matter of the Application of Arthur E. DUBOIS and Elizabeth Will.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

262 F.2d 88 (1958)

Matter of the Application of Arthur E. DUBOIS and Elizabeth Will.

Patent Appeal No. 6395.

United States Court of Customs and Patent Appeals.

December 19, 1958.

Myron B. Stevens, Washington, D. C., for appellants.

Clarence W. Moore, Washington, D. C. (S. Wm. Cochran, Washington, D. C., of counsel), for the Commissioner of Patents.

Before O'CONNELL, Acting Chief Judge, and WORLEY, RICH, and MARTIN, Judges.

RICH, Judge.

The question here is the patentability of a bit of military uniform accouterment known as a shoulder cord. We are told that it was created in response to a need for some device which could be worn by all infantrymen, regardless of ability or experience by virtue of which various medals, badges and ribbons might be worn, for the purpose of improving and maintaining morale and esprit de corps.

The shoulder cord, which is a closed loop large enough to surround the shoulder, is described (with illustrations) in the Department of the Army's Special Regulations No. 600-60-1 of 8 April 1953, pages 65 et seq. as follows:

"b. Cord, shoulder (fig. 93).

"(1) Description. — Shoulder cord of Infantry blue formed by a series of interlocking square knots around a center cord (1 of fig. 93).

"(2) How worn. — On the outer garment (coat, jacket, or shirt) of the summer and winter uniform, passed under the arm and over the right shoulder under the shoulder loop and secured to the button of the loop (2 of fig. 93)." Appellants, at the time of making the invention, were employees of the United States Government and assigned to what is now the Heraldic Branch, Office of Research and Engineering, Office of the Quartermaster General. The application and the invention have been assigned to the Government as represented by the Secretary of the Army.

The present application, Serial No. 324,157 was filed on the same day as an application for Design Patent, December 4, 1952, and Patent No. Des. 170,453, issued on September 22, 1953, also to the Secretary of the Army. The design patent shows the same shoulder cord as Fig. 93 of the aforesaid SR 600-60-1 and contains as part of its specification the following:

"The characteristic features of the design reside in the continuous endless loop composed of two major lengths of interlocking square knots joined at their upper ends by a plain cord and at their lower ends by a twisted cord, said cords being of lesser diameters than the diameters of the lengths of interlocking square knots, all as shown."

The functional purpose of the section of plain cord joining the upper ends is to go under the shoulder loop of the uniform without making a bulge and, similarly, the lesser diameter twisted cord joining the lower ends is to reduce chafing of the uniform under the sleeve.

The appealed claims read (emphasis ours):

"13. A shoulder cord for a uniform coat or the like which includes shoulder straps or the like, comprising a relatively short and slender top portion normally disposed beneath said shoulder strap and concealed thereby, relatively long and bulky ornamental front and rear portions depending from opposite ends of said top portion, and a relatively flat underarm portion connecting the lower ends of said front and rear portions together.

"18. The structure of claim 13, wherein said top portion includes means for securing said cord to said coat."

These claims stand rejected on the ground of "double patenting" because of the issuance to appellants of their design patent, Des. 170,453, no other references being relied on. Since there are no other grounds of rejection, the sole question to be decided is whether allowance of the appealed claims would result in "double patenting." Of the many possible aspects of this legal problem the only one here involved is that raised by the decision of the Board of Appeals that "only one invention is present" and therefore two patents cannot issue. In extenso, the board, in an opinion on a petition for reconsideration, expressed itself as follows:

"In our decision we found only one invention to be disclosed in appellants\' design patent Des. 64,352 sic. This number is that of the patent in a cited case the board was considering. The correct number is 170,453 and in the instant mechanical application of the same appellants, and we therefore held that since only one patent can issue on one invention and since the design patent had issued that this application cannot become a patent regardless of the claims hereof and regardless of any disclaimer filed by appellants. * * * we still are of the opinion that only one invention exists in the said design patent and in this mechanical application. We are of the opinion that our decision of April 16, 1957, is sound and that any deviation therefrom would not be warranted." (Emphasis ours.)

In explanation of the reference to disclaimer it should be mentioned that appellants, subsequent to final rejection, filed a terminal disclaimer, under 35 U.S.C. § 253, as to that portion of the term of any patent they might obtain on the appealed application extending beyond the...