Ashley v. Samuel C. Tatum Co.
| Decision Date | 13 March 1911 |
| Docket Number | 213. |
| Citation | 186 F. 339 |
| Parties | ASHLEY v. SAMUEL C. TATUM CO. |
| Court | U.S. Court of Appeals — Second Circuit |
Wood & Wood (E. R. Wood, of counsel), for appellant.
F. M Ashley and Albert T. Scharps, for appellee.
Before LACOMBE, WARD, and NOYES, Circuit Judges.
Complainant's patent contains no written description of his invention. It merely states that the figure of the drawing is 'a plan view of an inkstand, showing my new design,' and claims 'the ornamental design for an inkstand, as shown. ' This design is here given:
(Image Omitted)
The defendant's patent contains a description, which need not be quoted from, and a view of the design, which is here shown:
(Image Omitted)
The two inkstands, when produced in glass, which seems to be the only material used for them, although neither patent refers to material, look much more alike than do the two drawings.
The statute (Rev. St. Sec. 4933 (U.S. Comp. St. 1901, p. 3399)) provides that 'all the regulations and provisions which apply to obtaining or protecting patents for inventions or discoveries, not inconsistent with the provisions of this title shall apply to patents for designs. ' This reference includes section 4888 (page 3383), which provides that before any inventor shall receive a patent for his invention he shall 'file in the Patent Office a written description of the same. ' This would seem to require that an application for a patent for a new design should include a 'written description' of such design, and appellant contends that, since complainant's patent contains no such written description, it must be held void. If the proposition were a new one, the argument might be persuasive, especially in view of the unfortunate results that sometimes follow when the drawing is not accompanied by a written description. But in Dobson v. Dornan, 118 U.S. 10, 6 Sup.Ct. 946, 30 L.Ed. 63, precisely this point was raised, and the court held that the patent was not void because of its failure to contain a written description. This assignment of error is therefore without merit.
In the case at bar a written description is absent by reason of the action of the Patent Office. How that came about may be briefly stated. In the Dobson Case the design was one to be applied to carpeting, and it was represented by a photographic illustration. This illustration was, as the court states, 'a six-inch square, containing a single figure or design. ' Construing the claim, the court held that it 'covered the design as a whole, and not any part of it as a part; and it is to be tested as a whole-- as to infringement. ' The samples of complainant's and defendant's carpets which were offered in the court below were not before the Supreme Court, which found in the evidence of two experts sufficient to sustain the finding of the Circuit Court. Apparently the alleged infringement was of such a character that the case presented no difficulty of the sort experienced in Tompkins v. New York Co., infra.
Subsequently to the decision in the Dobson Case, the Commissioner of Patents rendered a decision (Ex parte Mygatt, 117 O.G. 598) holding that written descriptions in design patents were 'not only unnecessary, but also confusing and misleading,' and refusing to allow the applicant to place in the record a written description of his design. The Court of Appeals of the District of Columbia also held that in such patents 'a superadded verbal description is generally useless and ofttimes confusing. ' Ex parte Freeman, 109 O.G. 1339.
In conformity to these decisions the Patent Office in 1904 before Ashley's patent was granted, made a rule prohibiting applicants for design patents from insisting upon a written specification as a part of their patents. This went far beyond the Dobson Case. All that the Supreme Court had held was that, if the inventor did not supplement his drawing with a written description, he should not thereby lose his patent; his 'desig...
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EH Sheldon & Co. v. Miller Office Supply Co.
...10, 14, 15, 6 S.Ct. 946, 30 L.Ed. 63; Edison Electric Appliance Co. v. Fitzgerald Mfg. Co., 2 Cir., 32 F. 2d 705, 706; Ashley v. Samuel C. Tatum Co., 2 Cir., 186 F. 339. In Ashley et al. v. Weeks-Numan Co., 2 Cir., 220 F. 899, the court said, at page 903, "and in Ashley v. Tatum, 2 Cir., 18......
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...an annexed drawing. Dobson v. Dornan, 118 U.S. 10, 6 S.Ct. 946, Geo. Borgfeldt & Co. v. Weiss, 2 Cir., 265 F. 268. Cf. Ashley v. Samuel C. Tatum Co., 2 Cir., 186 F. 339. The defendant claims that the patent, if valid, is unenforceable because the plaintiffs have abused their patent monopoly......
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Aileen Mills Co. v. Ojay Mills, Incorporated
...necessarily bears upon the construction of the plaintiffs' patent and the immediate question of infringement. Ashley v. Samuel C. Tatum Co., 2 Cir., 1911, 186 F. 339, 342. The patent at hand should, therefore, be construed as limited substantially to the pattern shown in the drawing. Ashley......
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Application of Rubinfield, Patent Appeal No. 6397.
...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 conse......