In re Hargraves

• Decision Date: 17 December 1931
• Docket Number: Patent Appeal No. 2792.
• Citation: 53 F.2d 900,11 USPQ 240
• Parties: In re HARGRAVES.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

11 USPQ 240, 53 F.2d 900 (1931)

In re HARGRAVES.

Patent Appeal No. 2792.

Court of Customs and Patent Appeals.

December 17, 1931.

Albert L. Ely, of Akron, Ohio (J. Ralph Barrow, of Akron, Ohio, and Charles M. Thomas, of Washington, D. C., of counsel), for appellant.

T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for Commissioner of Patents.

Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.

GRAHAM, Presiding Judge.

An application was filed in the United States Patent Office by appellant, on March 19, 1925, for a mechanical patent on "improvements in balloon tire construction." Nine claims were attached to the application, all of which were rejected by the Examiner and by the Board of Appeals. The grounds for rejection on the part of the board were: First, double patenting, in view of appellant's design patents, Des. 64,352, of April 1, 1924, and Des. 64,972, of June 24, 1924. Second, that claims 1 and 2 were anticipated by reference to design patent to Wiener, No. 54,797, of March 23, 1920, mechanical patent to Cozakos, No. 1,468,439, of September 18, 1923, and design patent to Waters, No. 63,382, of November 27, 1923; that claim 4 is also anticipated by said references; that claims 3, 5, 6, 7, and 8, are anticipated by reference to mechanical patent to Jeffery, No. 454,115, of June 16, 1891; that claim 9 is also rejected on the last-named reference.

On the hearing before this court, appellant dismissed his appeal as to claims 1, 2, 4, and 6, relying only on claims 3, 5, 7, 8, and 9.

Claims 3 and 9 are given as typical:

"3. A balloon tire construction including a tread having a plurality of central continuous circumferential ribs and a circumferential series of non-skid buttons on each side of said tread, said buttons having angularly disposed free edges."

"9. A balloon tire construction comprising a tread having a continuous circumferential rib on each side of the center portion thereof."

The Board thus describes the alleged invention:

"The alleged invention is a balloon tire construction comprising a tread having a central continuous circumferential rib having transversely extending projections, and non-skid buttons on each side of said rib connected together to form circumferential ribs separated from the central rib by grooves."

Each of the two Hargraves design patents recites that it is for a design for "resilient tires," and displays, in substance, the identical design shown by the drawings and specification in the application here, and which is fairly set out in the claims. It is claimed by the applicant here, in his specification, that a great advantage is obtained in the use of balloon or low-pressure tires, by means of the particular conformation shown by him, in decreasing noise, in non-skid qualities, and to prevent wear due to "wiping."

It is well-established law that a design patent may anticipate a mechanical patent and vice versa. In re Walter, 39 F.(2d) 724, 17 C. C. P. A. 982; In re Dalton, 37 F.(2d) 420, 17 C. C. P. A. 826; In re Eifel, 35 F.(2d) 70, 17 C. C. P. A. 582; In re Staunton, 35 F.(2d) 63, 17 C. C. P. A. 579; In re Rutledge, 47 F.(2d) 797, 18 C. C. P. A. 1081; Lein v. Myers et al. (C. C. A.) 105 F. 962; White Co. v. Converse & Son Co. (C. C. A.) 20 F.(2d) 311. See, also, cases hereinafter cited.

While it is true, as a matter of law, that one may have a mechanical patent and a design patent upon the same subject-matter, there must be a clear patentable distinction between the two inventive ideas involved. This principle is well stated by the Examiner in the following language:

"If the feature in which the novel esthetic effect resides is the identical feature which produces the novel function, so that a structure embodying the mechanical invention would, of necessity, embody the design, and vice versa, it is questionable whether two separate patents, one for a design, the other for a mechanical patent, should issue; for neither patent could be practiced without infringing the other."

When the two ideas are indistinguishable in their characteristics, and manifestly the result of the same inventive idea, a second patent will not be granted. Williams Calk Co. v. Neverslip Mfg. Co. (C. C.) 136 F. 210, affirmed in Williams Calk Co. v. Kemmerer (C. C. A.) 145 F. 928.

If the two Hargraves design patents, or if either of them, would anticipate the application here, then to issue the mechanical patent asked for now would result in a double patenting to the appellant, which would be clearly contrary to law. The power to create a monopoly, in such cases, is exhausted by the first patent. Miller v. Eagle Mfg. Co., 151 U. S. 186, 14 S. Ct. 310, 38 L. Ed. 121; Protex Signal Co. v. Feniger (C. C. A.) 11 F.(2d) 43; Bayley & Sons v. Standard Art Glass (C. C. A.) 249 F. 478; White Co. v. Converse & Son Co. (C. C. A.) 20 F.(2d) 311; President Suspender Co. v. Macwilliam (D. C.) 233 F. 433; Williams v. Neverslip Mfg. Co., supra.

From a consideration of this application, appellant's prior patents, and the law as above stated, it is quite apparent to the court that appellant has in his application here nothing which is not necessarily involved in the exclusive right to use and enjoy the monopoly of his design patents. Therefore to grant him now a mechanical patent would be simply to further extend his monopoly beyond the period contemplated by law.

Appellant contends his mechanical patent extends to balloon tires, and that therefore he has shown something patentably distinct from his design patents. His design patents were for use, however, upon "resilient tires," and no reason is made apparent why they might not be used upon balloon tires, as well as upon any other resilient tire.

Finally, appellant presents this novel proposition: That his design patents are void as being upon an unpatentable subject-matter, namely, tire treads, and that therefore he stands as one having no pre-existing patent, and should be given a patent upon his mechanical device. Upon the invalidity of his design patents, he cites several cases where courts have held design patents upon tire treads to be void. Follen v. Lambert Tire & Rubber Co. (D. C.) 8 F.(2d) 303; Pashek v. Dunlop Tyre & Rubber Co. ...