Williams Calk Co. v. Kemmerer

• Decision Date: 06 June 1906
• Docket Number: 3.
• Parties: WILLIAMS CALK CO. v. KEMMERER et al.
• Court: U.S. Court of Appeals — Third Circuit

145 F. 928

WILLIAMS CALK CO. v. KEMMERER et al.

No. 3.

United States Court of Appeals, Third Circuit.

June 6, 1906

H. S Knight, for appellant.

Archibald Cox, for appellees.

Before DALLAS and GRAY, Circuit Judges, and CROSS, District Judge.

CROSS District Judge.

On December 13, 1898, design letters patent No. 29,793, were issued to one John R. Williams for a new, useful, and original shape or configuration of a horseshoe calk, and on January 22, 1901, letters patent No. 666,583 were granted to said Williams for certain new and useful improvements in horseshoe calks, both of which patents were subsequently assigned to the complainant. The complainant has filed a bill alleging infringement of both of these patents, and asking the usual relief in such cases. The Circuit Court, on final hearing, dismissed the bill, with costs, both on the ground of the invalidity of the patents and because they had not been infringed.

We think the design patent is invalid. Section 4922 of the Revised Statutes (U.S. Comp. St. 1901, p. 3396) was not intended to embrace a patent for such a design as is set forth in the design letters patent under consideration. It was intended, in order that a design might be patentable, that it should of itself, as an artistic configuration, present something new and useful from an aesthetic point of view. Within the meaning of the act there is nothing artistic, ornamental, or decorative in the design of a horseshoe calk; it is essentially a mechanical and not an aesthetic, device. It is impossible to suppose that it should be bought or used because of its aesthetic features. Its success as a calk would depend upon its useful, and not its artistic, character. As was well said in Rowe v. Blodgett & Clapp Co. (C.C.) 103 F. 873:

'Design patents refer to appearance, not utility. Their object is to encourage works of art and decoration which appeal to the eye, to the aesthetic emotions, to the beautiful. A horseshoe calk is a mere bit of iron or steel, not intended for display, but for an obscure use, and adapted to be applied to the shoe of a horse for use in snow, ice, and mud. The questions an examiner asks himself while investigating a device for a design patent are not 'What will it do?' but 'How does it look? What new effect does it produce upon the eye?' The term 'useful' in relation to designs means adaptation to producing pleasant emotions. There must be originality and beauty; mere mechanical skill is not sufficient.'

The views thus expressed by Judge Townsend were affirmed by the Circuit Court of Appeals for the Second Circuit in 112 F. 61, 50 C.C.A. 120, and fully express our own as to this patent.

The mechanical patent of the complainant has only one claim, as follows:

'A horseshoe-calk constructed with an attaching screw-shank, a square base, radial blades having vertical flattened beveled edges, vertical straight sides, and rounded, beveled, outwardly-tapering knife-edge lower ends, providing a conoidal-shaped tread, and arching recesses between the blades beneath the square base, the widening of the inner ends of the blades to form the arching recesses, preventing the calk from becoming completely worn down, so as to leave a wrench-hold.'

This claim apparently contains seven elements which are set forth with unusual particularity and minuteness. Without considering the question of the validity of this patent, it is sufficient to say that even a cursory examination of the prior art discloses a necessity for the restrictions which the patentee imposed upon himself when he phrased his claim with such guarded and minute particularity. This was not done idly or of choice, but because it was not otherwise possible for him to disclose anything that savored of novelty or invention.

It is perhaps true that the exact form of construction claimed by this patent cannot be found in any other one patent of prior date, but all, or substantially all, of the elements it embraces can be repeatedly found in the prior art. For example, we find the square base, the screw attachment, the radial cruciform blades, and the straight sides, the arching recesses between the blades, and the conoidal shaped tread. It is obvious that the foregoing embrace the salient features of the complainant's device. The necessity which so conspicuously controlled the patentee in minutely particularizing and qualifying the elements of his claim becomes all the more apparent, when we examine the file-wrapper of the patent in suit. Such an examination discloses that he was compelled over and over again to amend and narrow his claims in order to avoid the prior art, and prevent the rejection of his application. Thus the file-wrapper shows that Williams first claimed for calks with the ends formed with bevels, and again with rounded lower ends. These were rejected; the examiner saying:

'There is no invention whatever in rounding off or beveling the cutting edges as desired, this being a matter of mere choice in shapes, and

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