(273 F.)

"If the foregoing were a full recital of all which had been accomplished in the art before Jones, his right to what, in the happy phrase of Judge McPherson, was called 'the commanding place' which he first claimed, could not be successfully denied to him. It is not, however, a full recital, for it omits the vital part that the idea of the introduction of this third part for the very purpose for which Jones introduced it and for the very use which Jones made of it had occurred to Wirt, and had been disclosed by his patent application before Jones came upon the scene. Why then was not the Wirt device as much of a success as that of Jones at once proved itself to be? The fact, for it is a fact, that no commercial use was made of the Wirt device would be entitled to great weight, were it not for the other fact that the Wirt and Jones devices were in the same 'strong hands,' and that by submerging Wirt and bringing Jones to the surface the plaintiff would have been able to have greatly prolonged the life of its monopoly. The plaintiff is admittedly concluded by the finding that no patent issued to reward Jones for what he did can cover in its claims the three-part features of his device. "The touchstone of the case now before us is to be found in the following question: Given the like right to make use of the Wirt disclosure to the maker of the Jones device and to the maker of that of the defendant, does the latter infringe any of the inventive features of the former? If the claims of the reissued patent are limited to the specific features of construction, a finding of the validity of the claims would give so little promise of a finding of infringement and would have so little of practical value that a finding of infringement is not even asked.

"Because of this, without multiplying words the finding is made that the claims now before us should be so read as to limit them to the specific structural features of the Jones device, and that when so read the defendant's device does not infringe.

"We can applaud the persistency of counsel for plaintiff in upholding what he believes to be the right of his client to have the claims given such meaning as that they may be read upon the defendant's machine; we are compelled to admire the ingenuity and ability displayed in creating and defending the position selected from which to assert this claim of right, and we can commend the earnestness with which the argument is pressed, but we cannot escape the impression that back of the confidence of counsel is the subconscious, perhaps the unconscious, thought that the ruling made in the former case was wrong and should be corrected. Of course, the present proceeding before this Court cannot be used to serve any such appellate purpose. In no event would a trial Court be asked to make a ruling in the present case, which would be in conflict with the decree before made by an appellate court. What the plaintiff was before asking was for a decree giving to it a 'commanding place' in the art. A consequence would have been that no other person could make use of the Wirt disclosure. This claim of right was denied. There was no finding that plaintiff did not have the right to a subordinate place. Indeed, as counsel for plaintiff reads the opinion, there was a plain intimation that plaintiff did have this right. The inference, therefore, is that as in the view of counsel the Court was of opinion that the claim could be read and followed so as to read upon defendant's device, this reading might have been given to it. In fact, counsel now thinks this is what the Court should have done, and frankly says so. This makes not for the plaintiff's present contention but against it. This is because the Court did not uphold the validity of the claim to even a limited extent, but dimissed the bill. We do not see how the inference can be escaped that the effect of the ruling was the expression of the opinion of the Court that the claim could not be so read as to make of the defendant's device an infringement. This is now the very thing which the plaintiff is seeking to have done. We are, in consequence, asked to do what the Circuit Court of Appeals refused to do in the former case. This request at least approaches an encroachment upon the res adjudicata doctrine, because the granting of it would deny to the defendant (until the Court of Appeals indicates that the inference is not justified) the benefit of what logically results from what has been taken to be the view of the Court.

"The bill of complaint should, in consequence, be dismissed, with costs, for want of equity."

As the limitations in the claims of the reissued patent, carefully made to conform to our decision on the original patent, preclude a finding of invention in the three-part characteristic of the device, invention in the device of the reissue, if any, must reside in its several parts. Thus our attention is addressed to their structure.

It is quite evident that Jones, in making his socket, shopped around in the prior art, freely selecting things of value and discarding things without value. Practically all features of the new device can be found in company with other features in some old device. Of course, if in assembling and rearranging old things Jones produced a new entity, having new behavior and new capabilities, it might, none the less, amount to invention. But the invention would be confined to the new thing made of old parts and would, in view of our decision denying Jones invention based on a three-part device, be restricted, in all likelihood, to the structure into which it entered. And this we find to be so. We are of opinion that in the device as claimed in the reissue there is invention in some degree, but the invention Jones made is limited to the things he did and those things are measured in terms of structure. His invention is, therefore, limited to the particular structure disclosed, and, being so limited, it does not embrace the device of the defendant.

Passing by the question of validity of the reissued patent, we direct that the decree below be

Affirmed.

FARIS et al. v. PATSY FROK & ROMPER CO.

(Circuit Court of Appeals, Ninth Circuit. June 6, 1921.)

No. 3630.

1. Patents 15-Under present statute, design patent cannot be issued for mere outline.

Under Rev. St. § 4929, as amended by Act May 9, 1902 (Comp. St. § 9475), authorizing design patent for any new, original and ornamental design, which omits the provision, found in earlier statutes, authorizing a patent for any new, useful, and original shape or configuration, no patent can be issued for a mere shape or outline of the design or pattern, unless such shape or outline is, in and of itself, an ornamental design. 2. Patents 28-Originality and beauty are essential to valid design patent.

Patents for design were intended to encourage the decorative arts, and no patent can be issued for a design, unless it possesses both originality and beauty.

3. Patents 328-Design patent 54,809, for child's romper, held not to disclose invention.

The Zidell patent, No. 54,809, for design for child's romper, held not to disclose invention, in view of the earlier patent issued to the same inventor for a design which embodied all the features of the patented design.

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

(273 F.)

4. Patents 28 Outline of figure previously patented, with ornamentatations, does not disclose invention.

A design for a child's romper, consisting merely of an outline drawing, does not disclose invention over a previous design having the same outline, but embodying also additional ornamental features.

5. Patents 28-Different appearance of outline on filled-in figure does not show patentability of design.

The rule that the test of the validity of a design patent is whether the design presents to the eye the same general appearance as the prior design does not apply where the latter design embodies the same outline as the earlier, but lacks ornamental features embodied in the earlier.

6. Patents

121-Cannot be issued for feature of previous design not claimed in specification.

A patentee of a design cannot obtain a subsequent new patent for a design embodying features which were embodied in the original design, though not claimed therein; his remedy being by application for reissue of the original patent.

Appeal from the District Court of the United States for the Southern Division of the Southern District of California; Oscar A. Trippet, Judge.

Suit for infringement of patent by the Patsy Frok & Romper Company against W. A. Faris and another, individually and as copartners trading under the firm name of the Fifth Street Store. Decree for plaintiff, and defendants appeal. Reversed, with directions to dismiss the bill.

See, also, Zidell v. Dexter, 262 Fed. 145.

This suit was brought for infringement of plaintiff's design letters patent No. 54,809, granted March 23, 1920, to William I. Zidell, pursuant to an application filed by him on July 14, 1919, assigned to plaintiff, Patsy Frok & Romper Company. The design is for a child's romper. The defendants in four other suits brought in the District Court of the United States for the Northern District of California by William I. Zidell, for infringement of the same patent, have petitioned this court for permission to be heard upon this appeal amici curiæ. Permission granted.

William R. Litzenberg and Lissner, Lewinsohn & Barnhill, all of Los Angeles, Cal., for appellants.

Frederick S. Lyon and Leonard S. Lyon, both of Los Angeles, Cal., for appellee.

Chas. E. Townsend, of San Francisco, Cal., for petitioners, as amicus curiæ.

Before GILBERT, ROSS, and MORROW, Circuit Judges.

MORROW, Circuit Judge (after stating the facts as above). This appeal is before us upon the following stipulations, entered into by the parties:

"This appeal is taken by the defendants from said decree holding said design letters patent No. 54,809 valid, and it is hereby stipulated that the sole issue to be presented and determined upon this appeal is whether or not said design letters patent No. 54,809 are valid, in view of said design letters patent No. 52,720. For the purposes of appeal it is stipulated that said William I. Zidell produced and made a child's romper in accordance For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

with the drawing of patent No. 54,809, as distinguished from a child's romper conforming to the drawing of said patent No. 52,720, prior to the filing of his application for said patent No. 52,720."

The design of letters patent No. 54,809 is as follows:

Fig. L

rig 2.

Figure 1 is a front view of the child's romper. Figure 2 is a rear view of the same. In his application for patent No. 54,809, Zidell declared that he had "invented a new, original, and ornamental design for children's rompers, of which the following is a specification; reference being had to the accompanying drawing, forming part thereof." In the specification he claimed "the ornamental design for children's rompers as shown."

The design for letters patent No. 52,720 is as follows:

Figure 1 is a front view and Figure 2 is a rear view of the same. In his application for patent No. 52,720, Zidell declared that he had "invented a new, original, and ornamental design for children's rompers, of which the following is a specification; reference being had to

(273 F.)

the accompanying drawing forming part thereof." In the specification he claimed "the ornamental design for children's rompers as shown." It will be observed that the declarations and specifications for the two applications are identical, except in the drawings, to which references are made. The plaintiff contends that the only question to be determined is whether the design in patent No. 54,809 presented to the eye the same general appearance as the design in patent No. 52,720. If it does, it is conceded that patent No. 54,809 is invalid; but if, on the other hand, patent No. 54,809 does not present to the eye the same general appearance as patent No. 52,720, then it is contended that patent No. 54,809 is valid, and defendant has infringed.

The plaintiff finds support for this doctrine in the case of Gorham v. White, 14 Wall. 511, 20 L. Ed. 731. In that case Gorham & Co. had obtained a patent in July, 1861, for a new design in configuration and ornamentation for the handles of table spoons and forks under the name of the "Cottage Pattern." Defendant White had obtained two patents for designs, one in 1867, and another in 1868. These designs were also for the configurations and ornamentations on handles of forks and spoons. The statute under which these patents were obtained was section 11, Act of March 2, 1861 (12 Stat. 246-248). This statute was substantially a re-enactment of section 3 of the Act of August 29, 1842 (5 Stat. 543), the first statute of the United States on the subject. The Act of March 2, 1861, provides, among other things, that the Commissioner of Patents might grant a patent for any new and original design for a manufacture, or for any new and original impression or ornament to be placed on any article of manufacture, or for 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 for any new and original shape or configuration or any article of manufacture not owned or used by others before his, her, or their invention or production thereof, and prior to the time of his, her, or their application for a patent. It appears that the "Cottage" pattern of the Gorham & Co. design and the patterns of the White designs were all alike, the result of peculiarities of outline or configuration on the handles of the forks and spoons and of ornamentation thereon. The court, in discussing the provisions of the acts of Congress, said:

"The acts of Congress which authorize the grant of patents for designs were plainly intended to give encouragement to the decorative arts. They contemplate not so much utility as appearance, and that, not an abstract impression, or picture, but an aspect given to those objects mentioned in the acts. And the thing invented or produced, for which a patent is given, is that which gives a peculiar or distinctive appearance to the manufacture, or article to which it may be applied, or to which it gives form."

The court proceeds:

"It is the appearance itself, therefore, no matter by what agency caused, that constitutes mainly, if not entirely, the contribution to the public which the law deems worthy of recompense. The appearance may be the result of peculiarity of configuration, or of ornament alone, or of both cojointly; but, in whatever way produced, it is the new thing, or product, which the patent law regards."