PATENT DECISION.
In the matter of the application of William N. Bartholomew, assignor to J. Reckendorfer, for letters patent for a design for Rubber Eraser--Letters patent for designs have increased in importance within the past few years. Formerly but few were granted, now many are issued. To this day they have made so little figure in litigation that but three reported cases are known in which design patents have come into controversy. With their increase, questions have arisen concerning their scope and character, which have given rise to dispute and to inquiry as to the correctness of the current practice of the office in this branch of invention. While on the one hand, it is insisted that the practice has always been uniform, and is therefore now fixed and definite; on the other, it is asserted, that there has never been, and is not now, any well-defined or uniform practice, either in the granting or refusal of design patents.
The act of 1836 made no provision for the patenting of designs. The earliest legislation upon this subject is found in the act of August 29, 1842, section 3; and the only legislation upon the subject is found in this section and in section 11, of the act of March 2, 1861. The definition of the subject matter, or, in other words, of a "design," is the same in both acts. It is is follows:
"That any citizen, etc., who, by his, her, or their own industry, genius, efforts, and expense, may have invented or produced any new and original design for a manufacture, whether of metal or other material or materials, any original design for a bust, statue, bas-relief, or composition in alto or basso-relievo, or any new and original impression being formed in marble or other material, or any new and useful pattern, or print, or picture, to be either worked into or worked on, or printed, or painted, or cast, or otherwise fixed on any article of manufacture, or any new and original shape or configuration of any article of manufacture not known or used by others, etc."
This definition embraces five particulars.
1. A new and original design for a manufacture.
2. An original design for a bust, statue, etc.
3. A new and original impression or ornament to be placed on any article of manufacture.
4. A new and useful pattern, print, or picture to be worked into or worked on, or printed, or painted, or cast, or otherwise fixed on any article of manufacture.
5. A new and original shape or configuration of any article of manufacture.
The first three of these classes would seem to refer to ornament only; the fourth to ornament, combined with utility, as in the case of trade marks; and the fifth to new shapes or forms of manufactured articles, which, for some reason, were preferable to those previously adopted.
The disputed questions which have thus far arisen under these definitions are:
1. What variations may be claimed or covered by the patent consistently with unity of design.
2. Is a new shape of an article of manufacture, whereby utility is secured, a subject of protection under this act; and
3. Is mechanical function of any kind covered by it.
As to the first of these questions, it seems to have been assumed that the design spoken of in all parts of the sections referred to covered a fixed, unchangeable figure, that the protection of letters patent did not extend to any variation, however slight, but that such variation constituted a new design, might be covered by a new patent, and might safely be used without infringement of the first. This, it is said, is the correct theory of the law, and has been the uniform adjudication of the Office.
Neither of these statements is absolutely correct. The law by no means defines a design with such strictness. The language is, "new and original design for a manufacture," "new and original impression or ornament," "new and original shape or configuration." It would seem to be too plain for argument, that the new design, or impression, or shape, might be so generic in its character as to admit of many variations, which should embody the substantial characteristics and be entirely consistent with a substantial identity of form. Thus, if the invention were of a design for an ornamental button, the face of which was grooved with radial rays, it would seem that the first designer of such a button might properly describe a button of five rays, and, having stated that a greater number of rays might be used, might claim a design consisting generally of radial rays, or of "five or more" rays, and, that it could not be necessary for him to take out a patent for each additional ray that could be cut upon his button. So, if the design were the ornamentation of long combs by a chain of pearls, it would seem that a claim for such a design might be maintained against one who arranged the pearls, either in curved or straight lines, or who used half pearls only, and that such modifications if they had occurred to the designer, might properly have been enumerated in his specification as possible and equivalent variations. In short, I can see no reason, under the law, why designs may not be generic, why what are called "broad claims," may not be made to them, and why the doctrine of artistic or aesthetic equivalents may not be applied to them.
This has been recognized to a greater or less extent in the adjudications of the courts and in the practice of the Office.
One of the reported cases is that of Booth vs. Garelly 1, Blatch 247. The design is described as consisting of "radially formed ornaments on the face of the molds or blocks of which the button is formed, combined with the mode of winding the covering on the same, substantially as set forth, whether the covering be of one or more colors." The specification, in "substantially" setting forth the design, contained this language: "It will be obvious from the foregoing that the figures can be changed at pleasure by giving the desired form to the face of the mold by depressions and elevations which radiate from a point, whether in the center of the mold or eccentric thereto."
In the consideration of the case by the Court no objection was made to this statement or claim. In the case of Root vs. Ball, 4 McLean 180, the learned judge instructed the jury that "if they should find that the defendants had infringed the plaintiff's patent by using substantially the same device as ornamental on the same part of the stove they would, of course, find the defendant guilty. To infringe a patent right it is not necessary that the thing patented should be adopted in every particular; but if, as in the present case, the design and figures were substantially adopted by the defendants, they have infringed the plaintiff's right. If they adopt the same principle the defendants are guilty. The principle of a machine is that combination of mechanical powers which produce a certain result. And in a case like the present, where ornaments are used for a stove, it is an infringement to adopt the design so as to produce substantially the same appearance."
It has been the constant practice to grant patents for designs for fonts of type, for sets of silver plate, for a series of printers' flourishes, and the like. This class of cases has always passed without objection.
Two other cases which have arisen within the Office deserve notive. The first was for a series of miniature shoulder straps, with emblems denoting rank, provided with a pin, to be worn under an officer's coat, upon his vest, or as a lady's breastpin. The drawing shows eight of these pins with emblems of rank, varying from that of second lieutenant to major-general, specification describing the brooch for a second lieutenant goes on to say: "I propose to introduce, on some of them, the different ornaments showing the respective ranks of the army, from a major-generalship to a second lieutenancy. See Figs. 2, 3, 4, 5, 6, 7, 8."
The second case was that of an application for a monogram visiting card, on which the name was to be inscribed or printed in the form of a monogram. The applicant filed a drawing, showing a card upon which was a monogram of his own name. In his specification he gives certain rules for forming such monograms, and then says: "It is manifest that the form of the letters as well as the letters themselves can be changed as required by circumstances or the taste of the individual for whom the monogram is designed; and that the general form and outline of the monogram may be varied; and indeed, must vary to be adapted to the particular name it is required to represent."
The claim was for "a monogram, visiting card, or visiting card upon which the name is inscribed or printed in the form of a monogram, substantially as herein specified."
This application was rejected by the Examiner and Board of Examiners-in-Chief, but was allowed by the Commissioner upon appeal.
It is true that, before and since this patent was issued, many patents have been refused for what I have called generic designs. One man having designed a tack head, ornamented with radial lines, was compelled to take out one patent for his tack with six radial lines, and another for the same tack with eight. There are other instances of like character, but they only serve to show that the practice of the Office has not been uniform, and that the true practice is still to be adopted and followed.
I have no hesitation in saying, in view of the premises, that a valid patent may be granted for a new genus or class of ornaments as well as for specific ornaments, though I do not doubt that, under the statute, every species, variety, and individual having distinct characteristics under such a genus might also be patented, the patent being subordinate and tributary to that which covered the class. From the nature of this subject-matter there must always be more latitude in the issue of patents for trifling changes, or form, or outline, since it is only necessary that such changes should constitute a new "design" to entitle them to a patent of this class.
The second question relates to the elements of utility in patents for designs.
Upon this point, it is said by my predecessor, in Jason Crane ex parte Commissioners, December-May, 1869, p. 1, that the construction which has been given to the act of 1842, by the Office, ever since its passage, is that it relates to designs for ornament merely; something of an artistic character as contradistinguished to those of convenience or utility.
The Board of Examiners-in-Chief, in the present case, say "The practice of the Office has been uniform from the beginning, and has always excluded cases like the present from the benefit of the laws relating to designs." And, again, "The general understanding has always been that the acts of 1842 and 1861 were intended to cover articles making pretensions to artistic excellence exclusively."
In thus denying that a new "shape or configuration" of an article, whereby utility or convenience is promoted, is the proper subject of a patent under the acts referred to, the Office would seem to have involved itself in the absurdity that if a design is useless it may be patented; whereas, if it be useful, it is entitled to no protection.
Fortunately no such "uniform practice" has existed, and the Office is relieved from so grievous an imputation. The practice seems to have been taken for granted by the appellate tribunals, and, so far from being as stated, is, as nearly as possible, the reverse of it. Articles have been, and are being, constantly patented as designs which possess no element of the artistic or ornamental, but are valuable solely because, by a new shape or configuration, they possess more utility than the prior forms of like articles Of this character are designs for ax heads, for reflectors, for lamp shades, for the soles of boots and shoes, which have been heretofore patented as designs, and to this class might be added, with great propriety, that class of so-called "mechanical" patents, granted for mere changes of form, such as plowshares, fan blowers, propeller blades, and others of like character.
When, therefore, my learned predecessor in Crane's case added to this number a box so designed as to hold with convenience a set of furs, he did but confirm and not alter the practice of the Office, so far as it can be gleaned from the patented cases. I am of opinion that the class of cases named in the act as arising from "new shape or configuration" includes within it all those mere changes of form which involve increase of utility. This I take to be the spirit of the decision in Wooster vs. Crane, 2 Fisher 583. The design was of a reel in the shape of a rhombus. The learned Judge says "In this case, the reel itself, as an article of manufacture, is conceded to be old and not the subject of a patent. The shape applied to it by the complainant is also an old, well-known mathematical figure. Now although it does not appear that any person ever before applied this particular shape to this particular article, I cannot think that the act quoted above was intended to secure to the complainant an exclusive right to use this well known figure in the manufacture of reels. The act, although it does not require utility in order to secure the benefit of its provisions, does require that the shape produced shall be the result of industry, effort genius, or expense, and must also, I think, be held to require that the shape or configuration sought to be secured shall, at least, be new and original as applied to articles of manufacture. But here the shape is a common one in many articles of manufacture, and its application to a reel cannot fairly be said to be the result of industry, genius, effort, and expense. No advantage whatever is pretended to be derived from the adoption of the form selected by the complainant, except the incidental one of using it as a trademark. Its selection can hardly be said to be the result of effort even; it was simply an arbitrary chance selection of one of many well-known shapes, all equally well adapted to the purpose. To hold that such an application of a common form can be secured by letters patent, would be giving the act of 1861 a construction broader than I am willing to give it"
It would seem from this language that if there had been "advantage," that is, utility in the adoption of the form of the rhombus, that it would have found more favor in the eyes of the Court.
This subject has been well discussed in the opinion of Commissioner Foote in Crane ex parte. I concur in that opinion, except as to the recital of the former practice of the Office, which a careful examination has shown to be erroneous.
The third question may be readily disposed of. Modes of operation or construction, principles of action, combinations to secure novelty or utility of movement, or compositions of matter, can hardly be said to be "shapes, configurations, or designs," but where the sole utility of the new device arises from its new shape or configuration, I think it may fairly be included among the subjects which the act of 1842 was designed to protect.
The present case may, in view of the foregoing consideration, be disposed of without difficulty. Letters patent are asked, by applicant, for a new design for a rubber eraser, which consists in giving to the eraser a cylindrical body, with ends beveled to an edge. The claim is for the "cylindrical rubber eraser provided with a wrapper or case, as herein shown and described"
In the body of the specification the applicant describes the mode of making the eraser, and he also enumerates its advantages over erasers of the ordinary forms.
The Examiner does not object to the application because of the utility of the eraser, although the Board of Examiners in Chief seem to base their decision upon that point alone, but he pronounces the form already old in its application to artists' stumps, and he insists that the mode of composition or construction can form no element, for the claim for a design patent.
In the latter statement he is undoubtedly right. These patents are granted solely for new shapes or forms, and the form being new it is immaterial by what process that form is attained. The composition of matter or the mode of construction is neither "design," "shape," nor "configuration," and must be protected, if at all, under a patent of another kind. I cannot say that the presence of such matter in the specification would be objectionable if description merely, but it could in no way be allowed to enter into, or to modify the claim.
As to the first ground of rejection, I think the Examiner is in error. This purports to be a new form or shape of a distinct article of manufacture, to wit: rubber erasers. If it be new, as thus applied, it is immaterial whether pencils, or stumps, or pen holders, or anything else may or may not have been made cylindrical. If they are not substantially the same article of manufacture as erasers, the old form applied to this new article is unquestionably entitled to protection.
The applicant has not defined his invention with entire accuracy. He should strike from his claim the words "provided with a wrapper or case," as those relate to construction and not configuration, and he should insert the words "having the ends beveled to an edge" in lieu of the phrase erased, or he should adopt the usual form of claim for designs, viz: "The design for a rubber eraser, as shown and described."
As the claim stands, it ought not to be allowed, and the decision must be affirmed, but the applicant will be allowed to amend as suggested.
(Signed) S.S. FISHER.
Commissioner of Patents