It remains therefore to be considered whether these claims, with the addition of such a cutter to the combination passed upon by the court, are patentably new.

The specific cutter of these claims is shown in applicant's reissued patent, No. 11,060. In this patent for the purpose of raising the cutter the cutter-head is connected, by adjustable swinging or pivoted rods, to arms fixed on a cross-shaft, which is operated by a hand-lever. Also connected with the cutter-head are links, which are pivoted to boxes adjustable up and down in guides attached to the string-pieces of the elevator, the boxes being raised or lowered by suitable racks and pinions. On raising and lowering the boxes by means of the racks and pinions the links swing the cutter-head on the pivoted rods, and the cutter-head is thereby raised and lowered. The patent to Loring and Giles shows a cutter-head moving in guides rising from the frame of the elevator. Smith shows such guides perpendicular to the frame, and the patent of Butterfield, No. 24,076, shows a cutter-head for a planingmachine moving in guides and adjustable by means of a rack and pinion.

These different patents show the separate elements of the claims; but the appellant contends that, as he is the first to bring them together in an organized machine for planing ice, his claim for such a combination should be allowed. On this contention it is only necessary to refer to the decision of the court, in which it was said:

Assuming that the ice-elevator, although not specifically mentioned, ought to be regarded as an element of the claim, and recognizing the fact, as we must upon the proofs, that the other devices of the claim were never before assembled together in an ice-elevator, nevertheless, we are of the opinion that the claim is destitute of patentable novelty. * It cannot be disputed, and indeed it is obvious, that

the adjusting devices of the patent are preferable to those described in any of the prior patents (Loring and Giles, Smith, and Chaplin). They enable the operator to do his work of planing the ice with more certainty, ease, and speed. Because this is so, we reach the conclusion that the claim is invalid with reluctance. But the patentee was not the first to use the adjusting devices of the claim for the purpose of enabling a planing-tool to do its work. Precisely the same combination, found in the complainant's patent, of cutter-head, guides, racks, pinions, and levers, is described in a patent for a planing-machine granted May 17, 1859, to T. B. Butterfiold. All the advantages ascribable to the patented combination are due to the assembling together of an old elevator and an old cutter adjusting mechanism. This could be effected without requiring any modification of the parts which was not an obvious one, and within the ordinary skill of the mechanic. In contemplation of law, the patentee merely transported the devices of Butterfield into the old elevator, and cut away the useless feed-roller. When thus assembled together, the elevating mechanism performs no new functions, and the adjusting cutter mechanism performs precisely the functions it did in the Butterfield machine. It is wholly immaterial that the adjusting devices of Butterfield were designed to be used in a machine for planing wood. The application of an old organism to an analogous use is not patentable.

The appellant urges that the art of wood-planing from which the Butterfield patent was cited to show the rack and pinion for adjusting

the cutter-head, and that of ice planing and grooving, to which the device under consideration relates, are not analogous arts, and that had the case of Potts v. Creager, (C. D., 1895, 143; 70 O. G., 494; 155 U. S., 597) been decided by the Supreme Court before the argument of Briggs v. Central Ice Company the claim in suit would not have been declared invalid:

The case of Potts v. Creager has led to the closer scrutiny of transfers of various well-known devices from one branch of industry to another, where the remoteness of the relationship of the two industries is brought in question, and it is manifestly the duty of the Patent Office to consider under the fuller light of that important decision what alterations were necessary to adapt a device to its new use and what the value of such adaptation has been to the new industry. It is manifestly important also to note whether the effect of such transfer has been to supersede other methods of doing the same work. After examining prior cases the Court, at page 151, O. D., page 608, U. S., say:

As a result of the authorities upon this subject, it may be said that, if the new use be so nearly analogous to the former one, that the applicability of the device to its new use would occur to a person of ordinary mechanical skill, it is only a case of double use, but if the relations between them be remote, and especially if the use of the old device produce a new result, it may at least involve an exercise of the inventive faculty. Much, however, must still depend upon the nature of the changes required to adapt the device to its new use.

But Potts v. Creager does not announce any new or reannounce any unfamiliar doctrine in patent law. The principles applied therein are of daily and hourly application in the Patent Office and have been so from the beginning. The question always is, in the cases to which it applies, was the change of the device to its new use such as would' occur to a person of ordinary mechanical skill. As applied to the case before me the question is whether the use of the rack and pinion for raising and lowering the cutter-head is mechanical skill or something more, a change of such moment that it must be ascribed to the inventive faculty. As hereinbefore shown by the appellant's reissue patent, it is not new to use the specific cutter in an ice-elevator and to raise this cutter by a rack and pinion. This reissue patent does not seem to have been before the circuit judge in the case of Briggs v. The Central Ice Company.

I am not able to assent to the appellant's proposition that Potts v. Creager would have changed the result in the circuit court had the opinion in that case been promulgated before the trial there; but, on the contrary, I feel bound to treat the case as having been practically decided by the Circuit Court of Appeals in the Second Circuit, and am therefore constrained to hold that the combination in question is wanting in patentability.

The decision of the Examiners-in-Chief in refusing claims 2 and 3 is affirmed.

HISEY v. PETERS.

Decided February 20, 1895.

76 O. G., 333.

JURISDICTION-ASSISTANT COMMISSIONER-APPEALS.

The Assistant Commissioner, under assignment by the Commissioner, has authority to hear and determine any quasi-judicial question on appeal, and his determination is a legal determination thereof.

MOTION for rehearing.

CARTRIDGE-LOADING MACHINE.

Patent No. 480,015 granted Charles S. Hisey August 2, 1892. Appli cation of G. Moore Peters filed September 28, 1889, No. 325,358.

Mr. E. M. Marble for Hisey.

Messrs. Brown & Darby for Peters.

SEYMOUR, Commissioner:

Hisey's appeal from the decision of the Primary Examiner, denying his motion to dissolve the above entitled interference, was assigned by the Commissioner to the Assistant Commissioner for hearing and determination, and upon such hearing both parties appeared before the Assistant Commissioner and were heard. On the 26th day of January, 1895, the Assistant Commissioner rendered his decision, dismissing the appeal upon the ground that the question thereby raised-the inoperativeness of Peters' machine-was a question touching the merits, and upon which the appeal lay in the first instance to the Board of Examiners-in-Chief. The authority of the Assistant Commissioner to bear and determine any quasi-judicial question is now challenged by this motion, and it is claimed that the Commissioner cannot assign to the Assistant Commissioner duties of this character.

It is considered that the Assistant Commissioner under such assignment had authority to hear and determine the said appeal, and that his determination was a legal determination thereof. The motion to rehear the appeal is, therefore, denied.

EX PARTE LUNKEN.

Decided May 25, 1896.

76 O. G., 785.

1. DESIGN-VALVE CASING-MECHANICAL PATENT NO BAR.

Since the subject matter of an application for a design patent and of mechanical patent is different, since the matter claimed in the design application could not have been claimed in the other, and since the grant of the design patent cannot extend the term of the other, Held that the mechanical patent is no bar to the grant of a design patent upon the same article.

2. SAME-MEANING OF "USEFUL."

The word "useful" in the statute relating to designs has reference to mechanical rather than purely esthetic features in designs relating to machinery. The excellence of such a design depends upon its nice adaptation. The word "useful" may be applied to the shape or configuration of a patentable form with a signification much wider than "not harmful."

3. SAME-VARIATIONS.

An applicant may describe and claim variations in his patentable form within such limits as are consistent with unity of design and to the extent claimed. 4. SAME-MECHANICAL TERMS.

The use of mechanical terms in setting forth the relation of the parts of a design and their uses is not objectionable.

APPEAL from the Examiners-in-Chief.

DESIGN FOR A VALVE CASING.

Application of Edmund H. Lunken filed April 15, 1893, No. 470,540.

Mr. Edward Rector for the applicant.

SEYMOUR, Commissioner:

This is an appeal from the decision of the Examiners-in-Chief affirming the Primary Examiner's rejection of the following claims:

1. The herein-described design for valve-casings, consisting of the body portion having the opposite pipe connections, the wide and relatively thin bonnet or hood portion fitted upon the body transversely to the latter and having the vertically extending neck portion and laterally-projecting ears, the U-shaped clip surrounding the body and passing at its upper ends through the opposite ears of the bonnet, and the nuts upon the ends of the clip above the ears of the bonnet, substantially as shown and described.

2. The herein-described design for the bonnet or hood of a valve-casing, said bonnet having the oblong main portion, the vertically-extending neck portion, and the laterally-projecting ears, substantially as shown and described.

Upon the merits of this case the Examiners-in-Chief affirmed the rejection of the claims, chiefly upon the ground that the appellant prior to the filing of his application for a design patent had filed an application for a mechanical patent upon a valve having in appearance substantially the same casing. His mechanical patent was granted April 4, 1893. His application for the design patent was filed eleven days after that date.

In the decision appealed from it is intimated that had the appellant, after the taking of his mechanical patent

invented any new and useful and original shape or configuration for the device, or any part thereof, he would be entitled to a patent for such a design.

Section 4929 provides for three other classes of designs than this, referring to beauty or ornamentation alone. Omitting these matters, the section, so far as applicable to this case, is as follows:

*

SEC. 4929. Any person who, by his own industry, genius, efforts, and expense, has invented and produced any new, useful, and original shape or configuration of any article of manufacture, the same not having been known or used by others before his invention or production thereof, or patented or described in any printed publication, may, upon payment of the fee prescribed, and other due proceedings had the same as in cases of inventions or discoveries, obtain a patent therefor.

In Collender v. Griffith (18 Blatchf., 110) it was contended for the defendant that, as the mechanical patent was issued more than two years after the issuing of the design patent, the mechanical patent was

void. The original mechanical patent described a table of the same form as that described in the design patent. The court held the mechanical patent valid, and remarked that the shape of the structure may be the same as the shape in the design patent; but the subjectmatter of the two claims is not the same.

Since the subject-matter of the two applications is different, and since the matter claimed in this design application could not have been claimed in the application for the mechanical patent, and since the grant of the design patent now for fourteen years cannot extend the exclusive privileges beyond the term of the mechanical patent, it is held that the mechanical patent is no bar to the grant of a design patent upon this valve-casing.

The principal question is in what sense may the form or configuration of an article of manufacture be useful within the meaning of this statute concerning patentable designs. And two questions of form arise-first, may the applicant employ mechanical terms in setting forth the relation of the parts and their uses? and, second, may he describe variations in his claimed form of casing, and, if so, within what limits? These two questions will be treated together.

In many instances, as in this, the form has relation to the working parts of an invention. The excellence of the design depends upon its nice adaptation to the working parts which it incases. Even its beauty, that by which it attracts purchasers, may consist chiefly in this. It may also, as in this case, depend upon the fact that the material is well disposed, not heaped up uselessly in one part and not diminished harmfully in another. It is in part with such meaning that the word “useful," as applied to shape or configuration, is used in the design statute, and not only is there a meaning for this word "useful" as opposed to "harmful," but the form of an article of manufacture may so directly contribute to use as to constitute the chief claim of the originator to protection under the design patent law.

I have examined all the cases cited by the Examiner, all those cited by the applicant, and others, and, while finding many expressions tend! ing toward a limited meaning of the word "useful" in this statute, I do not recall a single case where a design patent has been declared invalid because the shape or configuration of the article of manufacture was too useful. I feel bound to give the word its ordinary and natural meaning, some meaning other than not harmful, and yet a meaning which will not require a design to be useful in such sense that a mechanical patent will certainly give the full protection. My thought is that a patentable design bears a similar relation to an article of manufacture of the same mechanical elements, but wanting in patentable design, that architecture bears to mere building. It is the duty of the architect to embrace in a harmonious scheme the conflicting requirements of use and artistic form; but the successful achieving of this is often something quite different from making a useful structure