Lapas attēli
PDF
ePub

We agree with the Commissioner of Patents that what appellant has accomplished does not, in the light of the prior art, rise to the dignity of invention. His device seems to be an improvement over Le Flare, whose invention is now in general use, but the improvement is not such as to entitle him to a patent.

Invention or discovery is the requirement which constitutes the foundation of the right to obtain a patent, and it was decided by this Court, more than a quarter of a century ago, that unless more ingenuity and skill were required in making or applying the said improvement than are possessed by an ordinary mechanic acquainted with the business, there is an absence of that degree of skill and ingenuity which constitute the essential elements of every invention. (Dunbar v. Myers, C. D., 1877, 140; 11 O. G., 35; 94 U. S. 187.)

What appellant here did was only the taking of a step in advance, which we think was obvious to any one skilled in the art.

The decision of the Commissioner of Patents is affirmed, and the clerk is directed to certify these proceedings as by law required. Affirmed.

[Court of Appeals of the District of Columbia.]

STEWART V. THOMAS.

Decided April 6, 1914.

202 O. G., 1263; 42 App. D. C., 222.

1. INTERFERENCE-PRIORITY-REDUCTION TO PRACTICE-WHAT CONSTITUTES. Where T. made a device which did not contain all the elements included in the issue, but did contain all the elements of the real invention, tested it, and found that it did what it was expected and required to do, Held that this constituted a reduction to practice.

2. SAME SAME.

Evidence reviewed and Held that T. was the first to conceive the invention in issue and the first to reduce to practice and priority awarded to him. (For Commissioner's decision see ante, 51; 202 O. G., 1259.)

Mr. V. D. Borst for the appellant..

Mr. Hubert Howson for the appellee.

ROBB, J.:

Appeal from a decision of the Commissioner of Patents in an interference proceeding in which priority of invention was awarded the appellee, Thomas.

The invention involves an electric-lamp socket adapted for use on electric sign-boards and of such a construction that it may be mounted and adjusted from the rear of the sign-board, where the wiring is done. The sockets of the prior art were so constructed that their securing means were partly adjusted from the front of the signplate and partly from the back. This construction often required

two men to adjust the socket, whereas, under the construction of the issue, one man can do the work. The invention is set forth in one count, as follows:

An electric sign receptacle comprising an insulating body carrying within it lamp receiving terminals and having also wire terminals, outwardly projecting claws carried by the receptacle and adapted to be inserted through the sign plate from the rear in any position rotarily, and means in connection with said claws to grip said sign plate so as to hold the receptacle against rotation.

Mr. Thomas is a mechanical engineer of the Bryant Electric Company, the owner of his invention. His duties consisted in supervising inventions and models, instructing model-makers, and designing new models and electrical devices. About July 20, 1908, he made pad sketches of the invention in issue and, on July 23d, commenced a model which was completed on the 24th. The model card which was made at the time was introduced in evidence, as was the model itself, which was marked with his name and the date of its completion. The model card, containing a sketch of the invention, was witnessed at the time by Mr. F. E. Seeley and Mr. G. W. Goodridge, to whom the invention was fully explained by Mr. Thomas. The model contains an insulating body or receptacle, has outwardly-projecting claws carried by the receptacle and adapted to be inserted through the sign-board from the rear, in any position rotarily, and means in connection with the claws to grip the sign-board and hold the receptacle against rotation. In short, it fully embodies every real element of the invention. Mr. Thomas, Mr. Seeley, and Mr. Goodridge, tested this device and found that it did what it was expected and required to do, namely, that it was capable of being inserted from the rear of the plate and there adjusted as called for by the issue. The tribunals of the Patent Office refused to accept this model as a reduction to practice because it did not have within it lamp-receiving and wire terminals. While those elements are mentioned in the issue they were both well known to the art and really form no part of the invention. Mr. Thomas explains that he did not stop to put in the screw-shell or lamp-receiving terminal and the wire-terminals, for the simple reason that in common practice all such receptacles contained them. What he was endeavoring to demonstrate, and what he did demonstrate, was that his device would overcome the limitations of prior devices. That having been demonstrated, it was merely necessary for him to attach the screw-shell and wire-terminals of the common and well-known type, as any mechanic with any knowledge of the art could have done.

If the claim read

an insulating body capable of carrying within it a lamp-receiving terminal and capable of having attached wire terminals.

it could not reasonably be contended that the failure of Thomas to install those old elements in his model would have precluded a finding that such model amounted to a reduction to practice. We think the claim should be thus construed. That this view is the correct one is apparent from the subsequent developments.

When Mr. Goodridge, who was the general superintendent of the Bryant Company, examined and tested this model he informed Mr. Thomas that

while his device was perfectly satisfactory from a mechanical point of view, in operation,

it would be rather expensive to make, and he therefore advised Mr. Thomas, after he had finished other models which were then in the model-room and for which there was a great rush, to devise some way to cheapen the construction. In October of 1909 Mr. Seeley, assistant general superintendent of the Bryant Company, suggested a modification of the device of Mr. Thomas and he and Mr. Thomas thereupon jointly made out another model card and had made another model embodying the simplified construction. This model contains the screw-shell and wire-terminals, but the evidence does not show that a lamp and wires were actually attached to it. The Examinersin-Chief and the Commissioner, however, accepted it as a reduction to practice. In their opinion the Examiners-in-Chief said:

The invention might well be regarded as one which, as disclosed in this exhibit, would require no test to determine its practicability but it is not necessary to so consider it as we are of the opinion that all that would be required as a test for such a device would be to clamp it in position and see that it would be properly held therein. It is not necessary to attach a lamp and wires and operate the lamp, for these features form no part of the invention, although included in the issue, and as the device did not differ in those particulars from the lamp sockets in use, their successful operation was a foregone conclusion.

Because the modified device therefor contained the screw-thread and wire-terminals, the Examiners-in-Chief and the Commissioner were satisfied to accept it as a reduction to practice, even though the evidence did not show that a lamp and wires had been attached and the lamp operated. Their reason for this ruling was that the screw-thread and wire-terminals were old and their mode of operation certain. While we are fully satisfied with this reasoning, we think it logically follows that the first device of Thomas amounted to a reduction to practice, for, had he attached thereto those old elements in the old way, as was done in the second device, it would have been unnecessary for him to have demonstrated their operation. The new device differed from the old merely in the manner in which it was adjusted to the plate. In all other respects it was the same. To rule that the failure of Thomas to attach those old elements to his first device, when they formed no part of his invention and would not have aided in the slightest degree in demonstrating its prac

ticability, would be a splitting of hairs unworthy of a court of justice. When Thomas finished and tested this model his invention was complete. The problem confronting him was solved. (Gaisman v. Gillett, C. D., 1911, 319; 165 O. G., 244; 36 App. D. C., 440.) The fact that a more desirable commercial result was subsequently obtained is of no consequence, because the first result demonstrated the utility and practicability of the device. (The Corn-Planter Patent, 6 O. G., 392; 23 Wall., 181; Sydeman v. Thoma, C. D., 1909, 340; 141 O. G., 866; 32 App. D. C., 362.)

Since Mr. Stewart did not enter the field until January, 1909, a time subsequent to the conception and reduction to practice by Thomas, and as the invention was neither secreted nor abandoned by Mr. Thomas, it is apparent that Mr. Thomas must prevail, as lack of diligence is not chargeable against one of the parties in an interference where he was the first to conceive and the first to reduce to practice. (Hubbard v. Berg, C. D., 1913, 460; 195 O. G., 818; 40 App. D. C., 577.)

Decision affirmed.
Affirmed.

[Court of Appeals of the District of Columbia.]

TIM & Co. v. CLUETT, PEABODY & Co.
Decided April 6, 1914.

203 O. G., 306; 42 App. D. C., 212.

1. OPPOSITION-NON-TECHNICAL MARK-USE OF MARK,

Where the opposer has used the words "Cluett, Peabody & Co., Troy, N. Y." on boxes and packages containing men's outer shirts and collars in the usual and regular order of business, but not on the shirts and collars themselves, Held that this use of the word "Troy" is not a trademark use, as it is merely an incident to the opposer's location and does not distinguish the product from that of other shirt and collar manufacturers of the same city.

2. SAME-SAME-INTEREST IN THE MARK.

Where an opposition is filed to the registration of the word "Troy under the ten-year clause and it appears that opposer has not used the word "Troy" as a trade-mark, but merely to inform the public that its place of business is at Troy, N. Y., Held that opposer has failed to show such an interest in the mark as entitles it to be heard.

Mr. C. W. Fairbank for the appellant.

Mr. F. C. Curtis for the appellee.

ROBB, J.:

Appeal from a decision of the Commissioner of Patents sustaining the opposition of appellee to the registration to the appellant, under the ten-year clause of the Trade-Mark Act, of the word "Troy" as a trade-mark for men's outer shirts and collars.

[ocr errors]

The opposer is a New York corporation engaged in the manufacture of men's outer shirts and collars at Troy, N. Y., where the applicant's factory is located. In its notice of opposition the opposer set forth that ninety per cent. of the collars and cuffs and a large percentage of the shirts made in the United States are made in that city, and hence that Troy has come to be known as the collar city; that prior to the date of the alleged adoption and use of the mark "Troy" by the applicant and during said ten-year period opposer "advertised and sold shirts, collars, and cuffs as Troy products" by marking its boxes and packages "Cluett, Peabody & Co., Troy, N. Y.;" that registration to the applicant of the word "Troy would be an irreparable injury to petitioner as well as to other shirt, collar, and cuff manufacturers of the city of Troy, N. Y.; and that the registration or the exclusive use of the said word "Troy" by said Tim & Co. would be against public policy, and injurious to the public at large throughout the United States. It is then averred that various other named parties have used the word "Troy" in the shirt and collar business, either as a trade-mark or in advertising their goods. To this notice of opposition a demurrer was interposed which the Examiner of Interferences sustained. His decision having been reversed an answer was filed by the applicant and evidence taken. The evidence tended to show, and it is admitted, that the opposer has used the words "Cluett, Peabody & Co., Troy, N. Y." on boxes and packages containing men's outer shirts and collars in the usual and regular order of business. In the view we take of the case it is unnecessary to consider the evidence as to the use of the mark by third parties.

In McIlhenny v. New Iberia Extract of Tabasco Pepper Co. (C. D., 1908, 325; 133 O. G., 995; 30 App. D. C., 337) it was ruled that a petition for the cancelation of a trade-mark must contain a statement of facts sufficiently full to show that the petitioner has been injured by the registration of the mark he seeks to have canceled, that is, that he has sustained an injury of a legal character. In Battle Creek Sanitarium Co. v. Fuller (C. D., 1908, 370; 134 O. G., 1299; 30 App. D. C., 411,) an opposition to the registration of a mark under the ten-year clause, the court pointed out that it is not sufficient for an opponent to say he believes he would be damaged by the proposed registration, but that

he must allege some fact showing an interest in the subject-matter, from which damage might be inferred.

In that case the opposer had alleged use of a mark in its advertising matter. The court said:

To constitute a trade-mark use, the mark must be attached or applied to the goods. (Columbia Mill Co. v. Alcorn, C. D., 1893, 672; 65 O. G., 1916; 150

« iepriekšējāTurpināt »