Blumcraft of Pittsburgh v. Ladd

• Decision Date: 01 March 1965
• Docket Number: Civ. A. No. 696-63.
• Citation: 238 F. Supp. 648,144 USPQ 562
• Parties: BLUMCRAFT OF PITTSBURGH, a Partnership Consisting of Hyman Blum, Max Blum, Louis Blum, and Harry P. Blum, Plaintiff, v. David L. LADD, Commissioner of Patents, Defendant.
• Court: U.S. District Court — District of Columbia

238 F. Supp. 648

144 USPQ 562

BLUMCRAFT OF PITTSBURGH, a Partnership Consisting of Hyman Blum, Max Blum, Louis Blum, and Harry P. Blum, Plaintiff, v. David L. LADD, Commissioner of Patents, Defendant.

Civ. A. No. 696-63.

United States District Court District of Columbia.

March 1, 1965.

John F. Smith, Washington, D. C., James C. McConnon, Paul & Paul, Philadelphia, Pa., for plaintiff.

Clarence W. Moore, Sol., Washington, D. C., for defendant.

JACKSON, District Judge.

This is a civil action under 35 U.S.C. § 145 against the Commissioner of Patents seeking judgment authorizing the Commissioner to issue a patent on an application (Design Serial No. 54,864) filed March 5, 1959, by the plaintiff.

The application relates to the design of a single railing post. A companion application (Design Serial No. 54,387) was also filed by the plaintiff on January 12, 1959. It was directed to a railing design which contained a plurality of the individual railing posts assembled and mounted in the form of a railing unit.

The Patent Office held originally that election was required between the two applications on the theory of double patenting. Plaintiff then was permitted to combine the subject matter of the two applications in one of the applications (No. 54,387), but refused permission to claim in the combined application both the railing unit and the individual railing post as his invention.

The Patent Office Board of Appeals sustained the rejection of the claim to the single post in the application at issue (No. 54,864), but recommended the allowance of a single claim in the combined application (No. 54,387). That claim was limited to the entire railing unit. The combined application was passed to issue April 23, 1963 as Design Patent No. 195,082. The present civil action seeks additional patent rights covering the design of the railing post alone.

At trial, the Patent Office took the position that the design for the entire railing unit is not "patentably distinct" from the design showing an individual railing post, stating that the subject matter as a whole presents a "single inventive concept". More specifically, the Patent Office relied upon the view of the Board of Appeals, which stated that "Railing posts are conventionally used in series array in * * * conventional orientations * * *"; that the figures showing the unit as a whole "represent but conventionally accepted use with resultant series appearance of the post * * *"; and that "the dominant aspect is the same in each figure * * *."

In response to this position, the plaintiff contended that the patent law does not recognize a "dominant aspect" in a combination or a design patent which is protected apart from the combination or design as a whole, citing Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 81 S.Ct. 599, 5 L.Ed.2d 592 (1960). The plaintiff quoted from pp. 344-345, 81 S.Ct. p. 604 of that opinion the following language:

"For if anything is settled in the patent law, it is that the combination patent covers only the totality of the elements in the claim and that no element, separately viewed, is within the grant. See the Mercoid cases, supra, 320 U.S. at 667; 320 U.S. at 684. The basic fallacy in respondent's position is that it requires the ascribing to one element of the patented combination the status of patented invention in itself. Yet this Court has made it clear in the two Mercoid cases that there is no legally recognizable or protected `essential' element, `gist' or `heart' of the invention in a combination patent".

The plaintiff also relied upon the following language of § 1504.01 of the Patent Office Manual of Patent Examining Procedure:

"Since under the law a design patent covers only the design as an entirety and does not extend to segregable parts (contrasting in

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