But a mere carrying forward or new or more extended application of the original thought, a change only in form, proportions, or degree, the substitution of equivalents, doing substantially the same thing in the same way by substantially the same means with better results, is not such invention as will sustain a patent. [4] The latter principle, we think, is more nearly applicable to the present case than the former. The history of oil-cracking reveals steady progress in the improvement of methods and processes, with the gradual cutting down of liquid residues and elimination of carbons and cokes. Rapid heating had been described as an important factor in several of the references introduced by the Commissioner to describe the knowledge of the prior art. Obviously the art was well acquainted with this factor, whether or not the maximum use had ever been made of it, prior to Smith's adaptation. What we have here is not invention but, instead, an example of the natural step by step development of the art.

Affirmed.

[U. S. Court of Appeals for the District of Columbia]

MONTGOMERY WARD & CO., INC. v. COE, COMMISSIONER OF PATENTS No. 8,282. Decided November 29, 1943

557 O. G. 584; 139 F. (2d) 17

1. CLAIMS-CONSTRUCTION-BREADTH.

"We agree with the district court that the claims are too broad, though from another point of view they may well be described as too narrow. The difficulty is that they relate to one thing while appellant's conception or improvement relates to another. Since the claims describe 'a sheet of wallpaper' without limitation, they evidently describe a product which is intended for use on walls, not one which is useful only in sample books. Appellant's improvement, on the other hand, relates to a product which is useful only in sample books and is not intended for use on walls."

""Under the statute it is the claims of the patent which define the invention. [No claim] can be aided by reading into it parts of the specifica

"We need not consider the present status of an exception to that rule under which claims which were too broad have sometimes been narrowed by reading into them parts of the specifications. For two reasons such an exception, if recognized, would not aid appellant here. First, the specification in this case is not limited to samples or sample books. Second, * * the difficulty with the appealed claims is not merely that they cover full-size wallpaper, and

Smith v. Nichols, 88 U. S. 112, 119.

'Railroad Supply Co. v. Elyria Iron & Steel Co., 244 U. S. 285, 293, 239, O. G. 656; Radtke Patents Corp. v. Coe, 74 App. D. C. 251, 268, 122 F. (2d) 937, 954, 535, O. G. 3, and authorities there collected; L. Sonneborn Sons, Inc., v. Coe, 70 App. D. C. 97, 100, 104 F. (2d) 230, 233, 502 O. G. 4, and authorities there collected.

in that regard are too broad. They are also too narrow, in that they do not cover samples or sample books."

4. SAME ENLARGEMENT BY SPECIFICATION..

"Whether or not a specification may limit claims, it is clear that it may not enlarge them."

5. PATENTABILITY—WALLPAPER SAMPLES.

"We agree with the Patent Office that there is nothing inventive in appellant's conception. Showing different colors side by side for comparison, and imposing one color upon another, are old and obvious. We cannot say that appellant's application of these principles to wallpaper samples was not an 'easy step.'"

APPEAL from the District Court of the United States for the District of Columbia. Affirmed.

Mr. Francis P. Keiper (Mr. Earle D. Crammond of counsel) for Montgomery Ward & Co., Inc.

Mr. W. W. Cochran (Mr. E. L. Reynolds of counsel) for the Commissioner of Patents.

Before GRONER, Chief Justice, and MILLER and EDGERTON, Associate Justices

EDGERTON, A. J.:

The district court dismissed appellant's bill to obtain a patent 1 on claims which the Patent Office had rejected for want of invention. The court found that the claims "are too broad and do not define an invention over the prior art."

The claims relate to "a sheet of wallpaper" and a method of making it. They involve printing on a single sheet bands of various colors, drying them, and then printing over them a common design which may or may not be in various colors. The claims do not mention samples or sample books. But the specification states that the

invention *
* while not limited to such application *
mary utility in mail order wall paper sample books.

has pri

Appellant's conception permits effective display of several color combinations on a single sample sheet. This saves paper and postage and is, as the district court found, a useful improvement in wallpaper samples.

[1] We agree with the district court that the claims are too broad, though from another point of view they may well be described as too narrow. The difficulty is that they relate to one thing while appellant's conception or improvement relates to another. Since the claims describe "a sheet of wallpaper" without limitation, they evidently describe a product which is intended for use on walls, not one which is useful only in sample books. Appellant's improvement, on the other hand, relates to a product which is useful only in sample books and is not intended for use on walls. As appellant says in its brief:

1 R. S. § 4915, 35 U. S. C. § 63.

The invention as a matter of fact has no artistic value for going on walls The stripes do not abut and difficulty would be had to make

[2] [3] [4] Under the statute it is the claims of the patent which define the invention. * [No claim]] can be aided by reading into it parts of the

specifications *

*

* * 2

We need not consider the present status of an exception to that rule under which claims which were too broad have sometimes been narrowed by reading into them parts of the specifications. For two reasons such an exception, if recognized, would not aid appellant here. First, the specification in this case is not limited to samples or sample books. Second, as we have pointed out, the difficulty with the appealed claims is not merely that they cover full-size wallpaper, and in that regard are too broad. They are also too narrow, in that they do not cover samples or sample books. Whether or not a specification may limit claims, it is clear that it may not enlarge them.*

[5] Furthermore, we agree with the Patent Office that there is nothing inventive in appellant's conception. Showing different colors side by side for comparison, and imposing one color upon another, are old and obvious. We cannot say that appellant's application of these principles to wallpaper samples was not an “easy step.” Affirmed.

[U. S. Court of Appeals for the District of Columbia]

6

EASTMAN KODAK COMPANY v. COE, COMMISSIONER OF PATENTS

No. 8,406. Decided December 6, 1943

557 O. G. 585; 139 F. (2d) 19

APPEAL from the District Court of the United States for the District of Columbia. Affirmed.

Mr. R. Frank Smith (Messrs. Clarence M. Fisher and Newton M. Perrins of counsel) for Eastman Kodak Company.

Mr. W. W. Cochran (Mr. E. L. Reynolds of counsel) for the Commisioner of Patents.

Before GRONER, Chief Justice, and MILLER and ARNOLD, Associate Justices PER CURIAM:

Affirmed upon the authority of Lincoln Engineering Co. v. StewartWarner Corp., 490 O. G. 3, 303 U. S. 545, 549–550.

'Altoona Publix Theatres, Inc., v. American Tri-Ergon Corp. et al., 452 O. G. 705, 294 U. S. 477, 487 (1935). Seyfarth v. Coe, 76 U. S. App. D. C. 96, 129 F. 2d 58 (1942), 543 0. G. 433.

'Smokador Mfg. Co. v. Tubular Products Co., 31 F. 2d 255 (C. C. A. 2d, 1929).

• Fowler & Wolfe Mfg. Co. v. McCrum-Howell Co., 215 Fed. 905, 909 (C. C. A. 2d). E. g., Gould patent, #786,210; Stenz, #1,924,004; Pohlmann, #2,028,948.

•Kirsch Mfg. Co. v. Gould Mersereau Co., Inc., 6 F. 2d 793, 794 (C. C. A. 2d). Cf. Abbott v. Coe, 71 App. D. C. 195, 109 F. 2d 449, 512 O. G. 3.

CASES ADJUDGED IN UNITED STATES COURT OF

CUSTOMS AND PATENT APPEALS

546 O. G. 3; 30 C. C. P. A. 704; 131 F. (2d) 437

IN RE C. W. MARKS SHOE Co. (No. 4622)

TRADE MARKS-REGISTRABILITY-PROPER NAMES.

There is nothing whatsoever in any standard authority to indicate that the name "Lady Chesterfield" signifies anything other than the person bearing that title is the wife of a person bearing the name "Chesterfield." Nor is there anything to indicate that the name "Lady Chesterfield" has a primary significance of either smartness or elegance. The term "Chesterfield" is in use as a surname and it is the distinguishing feature of appellant's mark. The addition of the descriptive word "Lady" to the surname "Chesterfield" does not render appellant's mark registrable under the Trade Mark Act of February 20, 1905.

United States Court of Customs and Patent Appeals,
October 26, 1942

APPEAL from Patent Office, Serial No. 421,856

[Affirmed.]

Joshua R. H. Potts, Eugene Vincent Clarke and Basel H. Brune for appellant. W. W. Cochran (E. L. Reynolds of counsel) for the Commissioner of Patents.

[Oral argument May 8, 1942, by Mr. Clarke and Mr. Reynolds]

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges

HATFIELD, Judge, delivered the opinion of the court:

This is an appeal from the decision of the Commissioner of Patents affirming the decision of the Examiner of Trade-Marks denying appellant's application for the registration of an alleged trade-mark under the Trade-Mark Act of February 20, 1905.1

The mark in question consists of the words "Lady Chesterfield," and is used on shoes.

1 This cause was originally decided by this court on the 29th day of June 1942. Thereafter, counsel for appellant filed a petition for rehearing. The rehearing was granted October 23, 1942, solely for the purpose of permitting the court to revise certain language In its original decision to which counsel for appellant directed the court's attention.

115