HC White Co. v. Morton E. Converse & Son Co.

• Decision Date: 06 June 1927
• Docket Number: No. 327.,327.
• Citation: 20 F.2d 311
• Parties: H. C. WHITE CO. v. MORTON E. CONVERSE & SON CO. et al.
• Court: U.S. Court of Appeals — Second Circuit

20 F.2d 311 (1927)

H. C. WHITE CO. v. MORTON E. CONVERSE & SON CO. et al.

No. 327.

Circuit Court of Appeals, Second Circuit.

June 6, 1927.

James J. Kennedy and W. Jay Ennisson, both of New York City, for appellant.

Thomas G. Haight and William F. Hall, both of Washington, D. C., and Otto Munk, of New York City, for appellees.

Before L. HAND and SWAN, Circuit Judges, and CAMPBELL, District Judge.

L. HAND, Circuit Judge (after stat-stating the facts as above).

The design patent appears to us to be not a design patent at all. We recognize that in æsthetics there are no standards, and that the design need not please such sensibilities as we may personally chance to possess. Nevertheless, we must find that the disclosure has at least a rudimentary æsthetic appeal, for so we interpret the word, "ornamental." This we have more than once said. Rowe v. Blodgett, 112 F. 61; Ashley v. Weeks, 220 F. 899, 901; Dietz v. Burr, 243 F. 592, 594; Wilson v. Haber (C. C. A.) 275 F. 346. The rule obtains elsewhere. Boyle v. Rousso, 16 F.(2d) 666 (C. C. A. 8); Williams v. Kemmerer, 145 F. 928 (C. C. A. 3); Pashek v. Dunlop, 8 F.(2d) 640. The plaintiff's tricycle has neither proportion, ornament, nor style, which could in our judgment make the remotest appeal to the eye. If little children at once want to have it, it is because they can see the possibility of play that it opens to them. It can touch their fancy only by what they can do with it, not by the pleasure they get by looking at it. Indeed, as we view it, it is fortunate for the plaintiff that this is true, as will presently appear.

On the other hand, a majority of us think the mechanical patent valid. The nearest approach is Spring's tricycle, for we cannot take seriously enough for discussion the mechanical toy of a century and a quarter ago. It would indeed have taken very little to change Spring's disclosure into the patent in suit. Yet, as it stood, it was wholly unsuited for little children. It had no flat broad seat — no broad seat at all, in fact. Such seat as it had, if by that one means, as White did, the whole part connecting the rear wheels with the front one, was not horizontal. It required a thorough reconstruction to be made into White's disclosure. We at once agree that, given the suggestion of making it into a safe tricycle for very small children to paddle about upon, the necessary adjustments were simple. In that respect the situation is a common one. Again and again, ad nauseam, courts have been fond of saying that it is the obvious when discovered and put to use that most often proves invention. In such matters we look rather to history than to our own powers of divination, if history is at hand. Kirsch v. Gould, 6 F.(2d) 793 (C. C. A. 2). Children have not changed, and would have liked as well to push about astride a little tricycle 200 years ago as to-day. The means have been also always at hand. The end and the means having therefore been for long available, this inventor merely thought to unite them by a fortunate insight which had theretofore escaped the imagination of others. We see in this an invention just because, being so simple, it had not occurred to any one before. The fact that the changes were so slight is quite irrelevant, so long as they were essential to the purpose, as they were. While the statute grants monopolies only for new structures, and not for new uses, invention is not to be gauged by the necessary physical changes, so long as there are some, but by the directing conception which alone can beget them. Traitel v. Hungerford, 18 F.(2d) 66 (C. C. A. 2). That was certainly absent before it came to White's mind.

Infringement of claim 2 being too plain for discussion, especially in the case of so successful an invention, we pass to a point of law which we must agree is not free from doubt. Had the design patent been valid along with the mechanical we should have been considerably embarrassed to avoid the defense of double patenting, for the attempted distinctions between the two disclosures appear to us trivial. A design patent may anticipate a mechanical, Lein v. Myers, 105 F. 962 (C. C. A. 2); and if both issue to the same inventor we may assume without deciding that it will be a case of double patenting, Cary v. Neal (C. C.) 90 F....