In re Henry

• Decision Date: 01 June 1925
• Docket Number: No. 1738.,1738.
• Citation: 6 F.2d 699,55 App. DC 396
• Parties: In re HENRY.
• Court: U.S. Court of Appeals — District of Columbia Circuit

55 App. DC 396, 6 F.2d 699 (1925)

In re HENRY.

No. 1738.

Court of Appeals of District of Columbia.

Submitted May 13, 1925.

Decided June 1, 1925.

Melville Church and C. B. Des Jardines, both of Washington, D. C., and H. E. Stauffer, of Dayton, Ohio, for appellant.

T. A. Hostetler, of Washington, D. C., for Commissioner of Patents.

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

ROBB, Associate Justice.

Appeal from a Patent Office decision rejecting claims 1, 7, 10, 11, and 14 of appellant's application. Claim 10 is reproduced as most representative of the group:

"10. The process of reproducing the grain of wood on a solid surface, which consists in producing a photographic negative of the wood to be simulated; producing from the negative a grained plate, the masses it is agreed that the word should be `recesses' instead of `masses' produced by the graining varying in depth with the shade to be produced and arranged to simulate the graining of the original material; filling the plate with coloring matter; withdrawing the coloring matter from the recesses of the grained plates by means of an elastic roller to which the coloring matter adheres; transferring the coloring matter from the elastic roller to the surface to be grained; merging the masses one into the other, so as to obliterate the lines of union."

Appellant is an employee of the National Cash Register Company, manufacturers of cash registers inclosed within steel casings or cabinets. There came to be a demand for the finishing of these cabinets or casings in imitation wood grain, to correspond to the natural wood finishing of the stores in which the cash registers were to be used. The problem of evolving a process for accomplishing this was intrusted to Henry. His prior knowledge of the art, supplemented by a further investigation, disclosed no satisfactory process by which the desired result could be accomplished. The only prior patent in this particular art was that to Herzog, No. 700,493, dated May 20, 1902.

In his specification Herzog says that his invention relates to painting machines for imitating the grain of wood by transferring its design from one surface to another. He proposed to accomplish this result by first selecting a model or master board, spreading a stain or color evenly over this board, scraping or wiping the surface clean of any surplus of color, passing a roller over it, and thereby transferring to the soft surface of the roller an impression of the grain marks of the model board. The impression on the roller is then transferred to the surface to be treated or "painted." Herzog neither contemplated nor suggested removing pith from the pores of the master board, so as to reproduce the irregularities of the surface, and thus make a contrasting color pattern, which might be transferred to the surface to be finished. In other words, Herzog had no conception of producing an etched master board. Herzog's process was found by appellant to be incapable of producing the desired result, and it is not contended by the Patent Office that, in and of itself, this process anticipates that of appellant. It is significant that, although Herzog's patent was more than 20 years old when appellant entered the field, the process there disclosed had not been adopted by manufacturers of cash registers.

Henry conceived the idea of photographing a piece of natural wood and preparing therefrom an etched metal plate of varying depth, corresponding to the color shades or tones upon the original...