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