[1] Appellant argues here that the Board committed reversible error in dismissing the opposition, specifically pointing out the similarities in sound and spelling of the competing marks. While we appreciate those similarities, we are of the opinion they are sufficiently outweighed by the dissimilarities as to allow registration of the mark applied for.

Finding no error in the decision of the Board, we affirm the decision. AFFIRMED.

KIRKPATRICK, J. (dissenting):

I am unable to agree with the majority in its conclusion that the marks are not confusingly similar. The Board found that " "WINCO' and 'WIANCKO' are substantially different in appearance, and while they contain some similarity in sound, they are readily distinguishable in that respect"-a finding adopted by the majority of this court though not in exactly the same terms. Judging by eye and ear, which is necessarily the basic consideration in trademark cases of this kind, I am unable to reach any conclusion other than that the marks are not substantially different in appearance and are not readily distinguishable in sound. In fact, it seems to me that anyone would be hard put to it to devise a word any closer to the opposer's mark than the applicant's, without making a letter for letter copy. The difference between "co" and "cko" is practically nil, and the whole case for the applicant hangs upon the insertion of an intermediate "a" which in pronouncing the word may be, and probably frequently is, slurred over.1

The goods of the parties are closely related products. The Board found that the goods of both "may be classified as electronic and electrical equipment and are to some extent sold to the same classes of purchasers or advertised in the same publications"—a finding not questioned by the majority. Both the Board and the majority agree that the applicant's broad designation of the goods as power supplies "comprehends static and transistorized power equipment of the character sold by opposer." In other words, regardless of the precise types of equipment now being sold, if registration is allowed, the trademarks may be used in connection with identical goods.

We are not here concerned with the law of unfair competition nor with the right of the applicant to the use of its corporate name, nor with its good faith in adopting it as a trademark. The issue is confusing similarity of the marks and nothing else. It is true that precedents are not very helpful in determining that issue. Even so, I do not see how the court can be applying consistent standards as to

1 "There is no such thing as a correct pronounciation for a trademark. It is pronounced in different ways by different people." Barton Mfg. Co. v. Hercules Powder Co., 24 CCPA 982, 88 F.2d 708, 710, 33 ÚSPQ 105.

likelihood of confusion when it decides that "Dyanshine" and "Dishine" (Barton Mfg. Co. v. Hercules Powder Co., supra) are confusingly similar and also that "WINCO" and "WIANCKO" are not.

This court, in a recent case in which it was held that "Huvilon" so resembled "Uvinul" as to be confusingly similar, pointed out that "The fact that neither name has any meaning apart from the goods on which they are used makes it difficult for a purchaser to keep the names clear of possible confusion based on *** similarities." General Aniline & Film Corp. v. Hukill Chemical Corp., 287 F.2d 926, 927. In the present case we have two perfectly meaningless words, both of them unusual and neither remotely suggestive of any English word. In the case of ordinary well known English words, most literate people know how the word should be spelled and, therefore, quickly notice a very slight variance. Not so with words like those before us or like "Huvilon" and "Uvinul." It seems to me that the soundness of the court's observation in the "Huvilon" case quoted above is demonstrated by the fact that in a period of seven months the letters received by the applicant showed over 100 different variations or misspellings of its name although the writers had the correct address and thus appeared to be acquainted with the applicant. I would reverse the decision of the Board.

United States District Court
District of Columbia

THE COMMONWEALTH ENGINEERING COMPANY OF OHIO AND CARL BERGER

v.

DAVID L. LADD, COMMISSIONER OF PATENTS

Civil Action No. 2997-59. Decided October 31, 1961

131 USPQ 255; 780 O.G. 1425

1. PATENTABILITY-35 U.S.C. 101-NOVELTY AND UTILITY.

"It is, of course, well established that two elements must exist in order to justify the issuance of a patent on the product of the inventive faculty: first, novelty; and, second, usefulness."

2. SAME UTILITY-SOME DEGREE OF UTILITY REQUIRED-In re Nelson' CON

STRUED.

"It is true, as is argued by counsel for the plaintiff and as was held in a thorough and well considered opinion by the Court of Customs and Patent Appeals in the Application of John A. Nelson, 280 F.2d 172, 178, that a high degree of usefulness need not be established, all that is needed is some degree of usefulness. In this case, however, the Patent Office held that there was no usefulness whatever in any degree, on the ground that the process will destroy the usefulness and the value of the very product which it is designed to produce by ruining its vital properties. Consequently, on that basis, the process is entirely lacking in utility."

3. SAME-SAME-COMPOSITION OF MATTER-Isenstead v. Watson CONSTRUED. "This court held in Isenstead v. Watson, 157 F. Supp. 7, that the term utility is a broad term and implies, among other things, capacity to perform

the function or attain the result claimed by the applicant in his disclosure. It further held that, in connection with a composition of matter, the test of utility is whether the invention will attain the purpose and will operate as disclosed and claimed by the inventor."

Held that "*** in connection with an invention consisting of a process or a method, the term utility must necessarily mean whether the process will operate as claimed and will produce the result intended by the inventor." 5. REVIEW BY THE U.S. DISTRICT COURT FOR THE DISTRICT OF COLUMBIA-CIVIL ACTION UNDER 35 U.S.C. 145-RULING OF PATENT OFFICE PRESUMPTIVELY CORRECT.

Where the Patent Office concluded that plaintiff's process for rapidly thawing frozen blood was lacking in utility in that the result intended by the inventor will not be produced, and, where the "plaintiff sought to overcome the opinion of the Patent Office on this technical scientific subject by adducing contrary opinions of other technicians," Held that "Ordinarily, in such a situation, the court should sustain the ruling of the Patent Office since it is presumptively correct"; and that "It has been said time and time again that a great weight must attach to the findings of the Patent Office, especially on highly technical matters."

6. PATENTABILITY—UTILITY-EVIDENCE-PROOF OF UTILITY BY ACTUAL REDUCTION TO PRACTICE OR LABORATORY EXPERIMENTS.

"It may be repeated that it is sought to overcome the impartial opinion of the Patent Office by a partisan opinion of the plaintiff's expert, without demonstrating the error or alleged error of the Patent Office by actual reduction to practice or even by laboratory experiments. To be sure, from a technical legal standpoint the filing of the application constitutes a reduction to practice, but when the Patent Office expresses a technical opinion that a process would not operate as claimed or would not result in the product desired to be obtained by the process, in order to overcome this conclusion some proof must be submitted and not merely another expert's a priori opinion, especially a partisan expert."

7. SAME-SAME-In re Krimmel DISTINGUISHED.

"The plaintiff strongly relies on the recent decision of the Court of Customs and Patent Appeals in the case of In re Krimmel, 130 USPQ 215, That case is clearly distinguishable, however, because there a certain amount of experimentation had been conducted successfully, and the court held that this was sufficient to show the utility of the alleged invention there involved."

8. SAME-SAME-PROCESs-Isenstead v. Watson Construed.

The remarks in Isenstead v. Watson, 157 F. Supp. 7, that "Great care and scrutiny should be particularly taken in connection with applications for medical patents"; and that "While the granting of a patent does not legally constitute a certificate that the medicine to which it relates is a good medicine and will cure the disease or successfully make the test which it was intended to do, nevertheless the granting of such a patent gives a kind of official imprimatur to the medicine in question on which as a moral matter some members of the public are likely to rely," Held “equally applicable to a process intended for medical use."

Dwight F. Bickel and Folsom E. Drummond for plaintiffs.

Clarence W. Moore (Jack E. Armore, of counsel) for defendant.

HOLTZOFF, J.:

Opinion of the Court

This is an action against the Commissioner of Patents under 35 United States Code 145 for an adjudication that the plaintiffs are entitled to a patent on an application that the defendant has rejected.

The application was filed by Carl Berger and assigned to the plaintiff Commonwealth Engineering Co. of Ohio on July 27, 1953, and is numbered 370533. It is entitled "Reconstitution of Frozen Biological Cellular Material." It involves a process for rapidly thawing and melting frozen blood. The specific process, in a general way, consists of passing the frozen blood through an elongated tube, which is heated to a high temperature, but the temperature of which gradually decreases to a temperature at the discharge end which it is desired the blood to reach.

The specification does not indicate the purpose or purposes for which this process is to be used. Testimony introduced in behalf of the plaintiff through an expert witness is to the effect that it may be used in connection with the making of medical diagnoses in medical laboratories, as well as in connection with blood transfusion in human beings, and that it may be employed both in connection with human blood and with animal blood inasmuch as animal blood is used in certain tests in connection with medical science.

The application was rejected on the ground that the alleged invention was lacking in utility. Thus, the Examiner in his answer before the Board of Appeals stated:

"The Examiner is of the opinion that high temperatures denature blood, thus making it unfit for transfusion purposes. In order to rebut the position taken by the Examiner, applicant has presented two affidavits. These affidavits are nothing more than opinion affidavits in that they set forth nothing more than conclusions."

The Examiner concluded:

"In the absence of tests establishing the utility of applicant's process the rejection for lack of utility is considered proper."

The Board of Appeals, in its opinion, pointed out that:

"Appellant has not submitted any factual evidence to establish that frozen blood when rapidly thawed by the claimed process gives a composition useful for transfusion."

It might be added that the plaintiff has not submitted any factual evidence to establish that frozen blood when rapidly thawed by the claimed process gives a composition useful for any purpose what

soever.

And, again, the Board of Appeals states:

"The Examiner has given sound scientific reasons for rejecting the claims for lack of utility or inoperativeness for the intended purpose. Appellant has not shown wherein the Examiner is in error and has thus far failed to prove his case."

Accordingly, the Board of Appeals affirmed the rejection.

[1] It is, of course, well established that two elements must exist in order to justify the issuance of a patent on the product of the inventive faculty: first, novelty; and, second, usefulness.

We are dealing here with the element of usefulness. 35 United States Code 101.

[2] It is true, as is argued by counsel for the plaintiff and as was held in a thorough and well considered opinion by the Court of Customs and Patent Appeals in the Application of John A. Nelson, 280 F.2d 172, 178, that a high degree of usefulness need not be established, all that is needed is some degree of usefulness. In this case, however, the Patent Office held that there was no usefulness whatever in any degree, on the ground that the process will destroy the usefulness and the value of the very product which it is designed to produce by ruining its vital properties. Consequently, on that basis, the process is entirely lacking in utility.

In this connection, it might be useful to advert briefly to the question as to what constitutes utility within the meaning of the patent law. The Circuit Court of Appeals for the Eighth Circuit in Besser v. Merrilat Culvert Core Co., 243 F. 611, 612, held, in connection with defining the term useful as applied to a machine:

“The term useful, as contained in the patent law when applied to a machine, means that the machine will accomplish the purpose practically when applied in industry. It is to be given a practical and not a speculative meaning. It means that the machine will work and accomplish the purposes set forth in the specifications."

[3] This court held in Isenstead v. Watson, 157 F. Supp. 7, that the term utility is a broad term and implies, among other things, capacity to perform the function or attain the result claimed by the applicant in his disclosure. It further held that, in connection with a composition of matter, the test of utility is whether the invention will attain the purpose and will operate as disclosed and claimed by the inventor.

[4] Similarly, in connection with an invention consisting of a process or a method, the term utility must necessarily mean whether the process will operate as claimed and will produce the result intended by the inventor.

[5] In this case, the Patent Office held that such a result will not be produced. The plaintiff sought to overcome the opinion of the Patent Office on this technical scientific subject by adducing contrary opinions of other technicians. Ordinarily, in such a situation, the court should sustain the ruling of the Patent Office since it is presumptively correct. It has been said time and time again that a great weight must attach to the findings of the Patent Office, especially on highly technical matters.