Application of Rubinfield, Patent Appeal No. 6397.

• Decision Date: 06 October 1959
• Docket Number: Patent Appeal No. 6397.
• Citation: 270 F.2d 391,123 USPQ 210
• Parties: Application of Don L. RUBINFIELD.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

123 USPQ 210, 270 F.2d 391 (1959)

Application of Don L. RUBINFIELD.

Patent Appeal No. 6397.

United States Court of Customs and Patent Appeals.

May 22, 1959.

Rehearing Denied October 6, 1959.

Bruce B. Krost and Woodling & Krost, Cleveland, Ohio, for appellant.

Clarence W. Moore, Washington, D. C. (J. Schimmel, Washington, D. C., of counsel), for Commissioner of Patents.

Louis Robertson, Chicago, Ill., amicus curiae.

Before WORLEY, Acting Chief Judge, and RICH, MARTIN and JOHNSON (retired), Judges.

WORLEY, Chief Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the Primary Examiner's rejection of the three claims of appellant's application for a patent on a design for a floor waxer. The appealed claims are as follows:

"1. The ornamental design for a Floor Waxer substantially as shown in Figures 1 to 4, inclusive.

"2. The ornamental design for a Floor Waxer substantially as shown in Figures 5 to 8, inclusive.

"3. The ornamental design for a Floor Waxer having the common appearance substantially as shown in Figures 1 to 8, inclusive."

Appellant's application discloses designs of two floor waxers of generally similar but specifically different appearance, one being shown in Figures 1 to 4 and the other in Figures 5 to 8.

No references have been cited and there is no issue as to whether appellant's designs involve patentable invention.

The exact ground on which the claims were rejected is somewhat obscure. In his final rejection, the examiner made the following statement:

"It is again noted that the application contains three claims which is not permissible in a design application. See Rule 153 of the Rules of Practice, 35 U.S.C.Appendix.

"The claims are therefore again and Finally rejected on the ground that a multiplicity of designs is claimed."

In the examiner's answer to the appeal to the board, it is said that:

"The examiner in the case has finally rejected the claims since the application does not comply with the statute as now interpreted, in that it includes more than a single claim and is directed to more than a single article. * * *

"The final rejection on the ground that a multiplicity of designs is claimed is deemed proper and in order."

The board in its opinion stated the ground of rejection as being "that a multiplicity of designs are claimed" and limited its discussion to the disclosure of two embodiments of the design, no express statement being made that plural claiming was bad per se. However, since the examiner raised the issue of multiple claiming as well as multiple disclosure, and since the board entered a general affirmance of the examiner's decision, the former issue is before this court as well as the latter. In re Wagenhorst, 64 F.2d 780, 20 CC PA 991; In re Wahl, 132 F.2d 323, 30 CCPA 719. It is noted that appellant's eighth reason of appeal here is that "The Board of Appeals erred in holding in effect that a design application could not include more than one claim."

In rejecting the claims as being based on a multiplicity of designs, the Patent Office tribunals did not rely in any way on the extent or nature of the differences between the two embodiments shown in appellant's application, but based their rejection on the proposition that two different embodiments can never properly be illustrated in a design application. In support of that proposition it is urged that since 35 U.S.C. § 171 provides for a patent on a design for "an article of manufacture," rather than a plurality of such articles, and since the total substance of a design rests in its appearance as a whole, a single patent cannot be based upon a showing of two or more different designs for an article, no matter how similar they may be.

It is not apparent that 35 U.S. C. § 171, relating to design inventions, is any more limited to a single article or form of article, than is 35 U.S.C. § 101, relating to inventions of other kinds. The former refers to "any new, original and ornamental design for an article of manufacture" and the latter to "any new and useful process, machine, manufacture, or composition of matter." Neither of the quoted expressions includes any plural term, and yet a plurality of specifically different processes, machines, manufactures, and compositions of matter, so long as they are embodiments of a single invention, are commonly described and claimed in a single patent. Since the language of 35 U.S.C. § 101 does not preclude that practice, we see no reason why the similar language of 35 U.S.C. § 171 should, per se, preclude the showing of two or more embodiments of a design invention.

In connection with its statement that the total substance of a design rests in its appearance, the board said the practice was firmly established that "design inventions cover `an article of manufacture' in the sense presented by its appearance or physical shape rather than in the sense that the invention is a theme of decoration or a mental creation of the inventor that is only presented in the patent by way of an illustrative embodiment." If the quoted statement means that a design invention can exist only in some one specific physical embodiment, we are unable to agree with it.

It is well settled that a design patent may be infringed by articles which are specifically different from that shown in the patent, Gorham Mfg. Co. v. White, 14 Wall. 511, 81 U.S. 511, 20 L.Ed. 731; Borgfeldt & Co. v. Weiss, 2 Cir., 265 F. 268, and it has been repeatedly held that a patent will be refused on an application claiming a design which is not patentably different from, or involves the same inventive concept as, a design claimed in a patent granted to the same inventor, even on a copending application. In re Bigelow, 194 F.2d 550, 39 CCPA 835; In re Russell, 239 F.2d 387, 44 CCPA 716, and cases there cited. It seems evident, therefore, that the inventive concept of a design is not limited to the exact article which happens to be selected for illustration in an application or patent.

While the exact issue under consideration here has not previously been before this court, In re Schnell, 46 F.2d 203, 209, 18 CCPA 812, contains the following language clearly indicating the opinion that the disclosure of more than one specific embodiment of a design invention in a single application may be proper:

"* * * Furthermore we know of no statutory or other reason why he a design applicant may not be permitted to submit drawings of more than one article if his design applies to more than one article and if it seems necessary and essential to use more than one drawing in order that he may teach the manner of applying the same to different articles. * * *

"* * * If he is entitled to certain protection under the enforcement provision, why is he not entitled by some appropriate words, in the claim and drawing, to disclose all that he is entitled to, in order that others may be warned of the probable scope of applicant\'s invention? See Grant v. Raymond, 6 Pet. 218, 8 L.Ed. 376. As was said in Ashley v. Samuel C. Tatum Co., supra, 2 Cir., 186 F. 339 `the absence of such a description in the case at bar has a necessary bearing upon the construction of the patent and consequently on the question of infringement.\'"

It seems anomalous to hold that two specifically different articles may represent a single inventive concept so far as double patenting or infringement is concerned, and yet may not be disclosed in a single application.

It appears that the instant rejection, so far as it is based on the fact that the application discloses more than one embodiment of appellant's design, raises a question of form rather than of substance. The designs of Figures 1 to 4 and 5 to 8 differ primarily in that the latter includes certain braces not present in the former. Apparently appellant could have presented a single set of drawings showing the braces in dotted lines, as "immaterial" parts, and seemingly no objection would have been made by the Patent Office, although the substance of the disclosure would have been substantially what it is now. See Sec. 1503.01 M.P.E.P.

It is argued in the brief for the Commissioner that the rejection of the appealed claims was in accordance with the long standing practice of the Patent Office and, therefore, should not be set aside. So far as the limitation of the disclosure to one specific embodiment is concerned, no such settled practice has been shown. With regard to a contention by the Solicitor of the Patent Office in the Schnell case that the uniform practice of the Patent Office had, for many years, required "that design patents must be for a single article of manufacture" this court said:

"* * * We may dispose of this contention of the solicitor, at this point, by saying that, in view of rulings in certain cases hereinafter referred to, no such uniform practice in the Patent Office in this respect is shown to have prevailed for a very long period of time. * * *"

Later in the opinion cases were cited to support the quoted statement. No Patent Office...