Battery Patents Corporation v. Coe

• Decision Date: 13 September 1937
• Docket Number: No. 6871.,6871.
• Parties: BATTERY PATENTS CORPORATION v. COE, Commissioner of Patents.
• Court: U.S. Court of Appeals — District of Columbia Circuit

68 App. DC 61, 93 F.2d 220 (1937)

BATTERY PATENTS CORPORATION v. COE, Commissioner of Patents.

No. 6871.

United States Court of Appeals for the District of Columbia.

Decided September 13, 1937.

Nelson J. Jewett, of Washington, D. C., and Russell Wiles, of Chicago, Ill., for appellant.

R. F. Whitehead, Solicitor, United States Patent Office, of Washington, D. C., for appellee.

Before MARTIN, Chief Justice, and ROBB, VAN ORSDEL, GRONER, and STEPHENS, Associate Justices.

STEPHENS, Associate Justice.

The appellant, hereinafter referred to as the plaintiff, is assignee of the application of one George S. Lewis seeking a design patent for a combined bicycle guard and lamp. The application was rejected by the Examiner, and on appeal the Board of Appeals sustained the Examiner's rejection. The plaintiff then filed a bill in equity in the United States District Court for the District of Columbia, under Section 4915 of the Revised Statutes, as amended (35 U.S. C. § 63 35 U.S.C.A. § 63), alleging the filing and due prosecution of the application and seeking a decree that the plaintiff is entitled to receive letters patent for the invention of Lewis, and that appellee, United States Commissioner of Patents, hereinafter referred to as the defendant, be authorized and directed to issue such patent. The defendant answered, admitting the filing and due prosecution of the application, and the rejection thereof, but asserting that the design was unpatentable, in the light of certain known designs mentioned below.

The defendant cited the following prior art: Humble, 1,069,550, Aug. 5, 1913; Sawyer, Design, 92,114, Apr. 24, 1934; Advertising Booklet of the Series 50 Buick Straight Eight for 1932, Page 13, Model 32-56-S, Fender & Headlights.

At the trial below the patent application, the Examiner's statement, the decision of the Board of Appeals, and the prior art cited were in the usual course made a part of the record. Mr. Lewis testified in behalf of the plaintiff as to prior bicycle design, his design, and the widespread adoption thereof by bicycle manufacturers. No testimony was introduced for the defendant. At the close of the hearing, the trial court made the following findings and conclusions:

"Findings of Fact

"1. This is a suit brought under the provisions of Section 4915 R.S. (U.S.C., Title 35, Sec. 63 35 U.S.C.A. § 63) to authorize the Commissioner of Patents to issue a design patent to plaintiff on the application of George S. Lewis, plaintiff's assignor.

"2. The application of Lewis discloses a design for a Combined Bicycle Guard and Lamp in which the guard for the front wheel of the bicycle is extended over the wheel and beyond the fork of the bicycle, a tear-drop shaped lamp being affixed to the guard between the fork and the end of the guard.

"3. The patent to Humble, No. 1,069,550, discloses a bicycle having a guard for the rear wheel which extends over the upper portion of the wheel.

"4. The design patent to Sawyer, No. 92,114, shows a design for a velocipede having a guard for the front wheel which is extended over the wheel and a substantial distance beyond the steering fork, a lamp being affixed to the guard between the fork and the end of the guard.

"5. The Advertising Booklet of the Series 50 Buick Straight Eight for 1932, discloses on page 13 an automobile having a tear-drop shaped fender light.

"6. In the early days of bicycle manufacture, it was the practice to have the front guard of the bicycle terminate even with the steering fork.

"7. Later, the top of the front guard was advanced, in some cases, to a point in line with the truss rods.

"8. At the time of the Lewis design involved herein, the front guard of bicycles had not been advanced beyond the truss rods, and it was the common practice of bicycle manufacturers to have the front guard terminate even with the steering fork, or even with the truss rods.

"9. In the Lewis design, the guard was advanced a very substantial distance beyond the fork and beyond any usual location of the truss rods.

"10. In the Lewis design, the lamp was placed between the portion of the guard even with the truss rods and the forward end of the guard, which extended a substantial distance ahead of the truss rods.

"11. Plaintiff has sold two types of bicycles, one model, called the `Standard', being cheaper and not being provided with the Lewis design. In this model, the guard terminates even with the truss rods. In the second type, called the `De Luxe' model, the bicycle, which is otherwise the same as the `Standard', is provided with the elongated fender and lamp of the Lewis design. The bicycles have been sold in large numbers. Contrary to the usual experience, the more expensive model, equipped with the Lewis design, has outsold the cheaper model. Up to the present time, the higher priced bicycle has outsold the cheaper one in the proportion of 14 to 10.

"12. Within a very short time after the new design appeared, it was copied by most of plaintiff's competitors.

"13. One competitor employs a guard and a tear-drop lamp-shaped device on the guard, the lamp being a dummy.

"Conclusions of Law

"1. In order that a design be patentable its creation must have involved the exercise of invention.

"2. The design of the Lewis application does not disclose invention over the prior art as exhibited in the patents and publication in evidence.

"3. The plaintiff is not entitled to the issuance of a patent on the application of its assignor, George S. Lewis.

"4. The bill should be dismissed."

A decree was thereupon entered dismissing the bill of complaint, and this appeal was taken.

We have carefully examined the record and find that there is substantial evidence to support each of the findings of fact. The question in the case is whether the conclusion of law that the design of the Lewis application does not disclose invention is valid.

The Lewis design is illustrated by the following drawings:

The Humble patent shows a bicycle rear mudguard which has the same general configuration as the guard employed by the plaintiff in his design:

The Sawyer design shows a velocipede equipped with a front mudguard and lamp:

The Buick Advertising Booklet reveals an automobile which has a front fender with a parking light mounted thereon as shown in the following cut:

The parking light is the small lamp set on the fender in line with the rear of the headlight.

The tribunals of the Patent Office considered that the general configuration of the Lewis lamp and the form of mounting were shown by the Buick citation, and that nothing inventive resided in the guard element in view of Humble. The conclusion was that there was no invention in mounting a lamp of substantially the Buick form upon a guard the shape of which was old.

It may be admitted at the outset that small lamps of streamlined outline were known before the instant application, and that bicycle mudguards semicircular in shape were common.

In order for one to be entitled to a design patent the design which he has created must be the result of inventive skill. The Supreme Court, in Smith v. Whitman Saddle Co., 148 U.S. 674, 679, 13 S.Ct. 768, 770, 37 L.Ed. 606 (1893), quoted from Northrup v. Adams, Fed.Cas. No. 10,328, 12 O.G. 430, as follows:

"`To entitle a party to the benefit of the act, in either case mechanical patent or design, there must be originality, and the exercise of the inventive faculty. In the one, there must be novelty and utility; in the other, originality and beauty. Mere mechanical skill is insufficient. There must be something akin to genius — an effort of the brain as well as the hand. The adaptation of old devices or forms to new purposes, however convenient, useful or beautiful they may be in their new role, is not invention.'"

The Court continued:

"The shape produced must be the result of industry, effort, genius or expense, and new and original as applied to articles of manufacture. Foster v. Crossin, 44 Fed.Rep. 62. The exercise of the inventive or originative faculty is required, and a person cannot be permitted to select an existing form and simply put it to a new use any more than he can be permitted to take a patent for the mere double use of a machine. If, however, the selection and adaptation of an existing form is more than the exercise of the imitative faculty and the result is in effect a new creation, the design may be patentable." 148 U.S. 674, at page 679, 13 S.Ct. 768, 770, 37 L.Ed. 606

See, also: In re Sherman, 35 App.D.C. 100 (1910); Finley v. Coe, 64 App.D.C. 276, 77 F.(2d) 399 (1935).

Combining old forms so as to produce a new and ornamental design is not patentable when in the particular case the combining of the elements did not require invention. In Knapp v. Will & Baumer Co., 273 F. 380, 384, 385 (C.C.A.2d, 1921), the court said:

"What Knapp did involved no inventive act. He took an ordinary coach candle, with its bell shaped tip, and simply changed the column from a round one into a square one, leaving the bell-shaped tip the same as before. In converting a round column into a square one, he followed precisely the teachings of the art as previously set forth by Lamborn. He did what any ordinary workmen would have done — drew a round candle through a square mold in accordance with a common practice. Then he provided it with a self-fitting base in accordance with the teachings of the art since 1861.

"It is true that invention may reside in a new combination of old elements. Every new combination of old elements, however, is not patentable."

And in Imperial Glass Co. v. A. H. Heisey & Co., 294 F. 267, 269 (C.C.A.6th, 1923), the court said:

"While we do not question that patentable designs may arise from regrouping familiar forms and decorations, yet when all that was done was to take an existing piece of table glassware having these flutes, and substitute a slightly different form of flute already in common use on other articles of domestic table...