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.