line separating the areas of acceptable and non-acceptable image patterns is described in appellants' specification as the "juncture between the central and the peripheral zones."

As stated in the specification:

The present invention improves images subjected to comatic and astigmatic aberrations by the use of an optical mask to intercept only those light rays which form the tails of the smeared images thus improving the definition and sharpness of the composite image. Depending upon the type of aberrations involved, an optical mask is positioned around the optical axis adjacent the aperture of the optical system, either in front of the aperture or behind it, and in some cases in both positions.

Appellants' mask is so placed relative to the lens that it blocks out the light rays which form an image pattern larger than K, and passes only the rays which form an image pattern which lies within the limits of the acceptable circle of confusion, K. Appellants assert that proper positioning of the mask with respect to the lens is critical since only the unwanted light rays which create the image outside of the acceptable circle of confusion are to be blocked and that it is desirable to pass the greatest possible number of light rays which will create images inside of the acceptable circle of confusion (K.). Otherwise, as appellants point out, the total light energy is too greatly diminished and in a photographic camera, for instance, the light sensitive film would be underexposed at its outer edges.

Appealed claim 35 defines appellants' invention as follows:

35. In an optical system, the combination comprising an image forming optical assembly having an optical axis, an image area of fixed boundaries and an object area, and an aperture, the optical assembly being subject to extra-axial aberrations which result in point sources of light in the object area from which a pencil of rays filling the aperture are directed being focused in a circle of confusion in the image area, the circle of confusion being discernably greater in a peripheral zone of the image area than in a central zone, the juncture between the central zone and peripheral zone being defined as the locus of the point source images in the image area having a maximum acceptable circle of confusion, and an optical mask having an opening through which passes the optical axis, the edge of the opening in the optical mask being located in any selected axial plane at the intersection of two light rays lying in the selected plane, the first of the two rays being defined as the ray from a point source in the object area whose principal ray impinges on the juncture between the central and peripheral zones in the image area, the first ray passing through the aperture at the edge thereof on the same side of the optical axis as the image of said point source, and the second of the two rays being defined as the ray from a point source in the object area whose principal ray impinges on said fixed boundary of the image area, the second ray impinging on the image area just within an acceptable circle of confusion around the impinging point of the principal ray and passing through the aperture on the same side of the optical axis as the image of said point source, the principal ray being the light ray from any point source that intersects the optical axis at the center of the aperture.

Claim 37 is substantially identical to claim 35 except that it requires the two intersecting rays to pass through the aperture on the side

of the optical axis opposite to the points at which they impinge on the image area.

Claims 35 and 37 define the position of the aperture in the mask as an infinite number of points, each point in an axial plane and determined by the intersection of two light rays.

In its decision, the Board of Appeals relied solely on the patent to Weidert, No. 1,545,869 in affirming the Examiner's rejection of the claims. In essence, Weidert added to a conventional camera assembly a fixed masking diaphragm having an aperture perpendicular to and centered on the optical axis of the lens to cut off non-corrected marginal rays of oblique light pencils which would otherwise cause chromatic aberration in the peripheral portion of the image. Weidert recognized that such a diaphragm could be positioned either in front of or behind the lens. Weidert states that the diaphragm is positioned so that:

non-corrected marginal rays of the oblique pencils of light passing through the lens and through the adjustable diaphragm in a direction which would allow them to meet the free space of the rear wall of the camera containing the sensitive layer are cut off. The cutting off of said non-corrected margnial rays of oblique pencils having the effect that these marginal rays are prevented from producing chromatical aberrations in the image as they would do if they were not cut off. [Emphasis added.]

The Board agreed with the Examiner that "every vestige of structure recited is as fully satisfied by the Weidert reference as it is by appellants' disclosure" and concluded by stating that "the rejection of claims 35 and 37 stated by the Examiner is affirmed." The Board found that the definitions of the mask opening and its location as set forth in claims 35 and 37 did not distinguish appellants' asserted invention over Weidert's masking diaphragm as shown in his camera which serves the same purpose as that asserted for appellants' mask. The optical system "structure" recited in appealed claims 35 and 37 to which the Board referred in its opinion is a combination of optical elements which are recited as:

(1) An image forming optical assembly having an optical axis, which is subject to extra-axial aberration,

(2) An image area of fixed boundaries,

(3) An object area,

(4) An aperture, and

(5) An optical mask having an opening through which the optical axis passes. The claims otherwise set forth the recognized optical phenomena which give rise to the aberrations which require the selection of a permissible circle of confusion and the formation and placement of the mask relative to the optical axis.

We agree with the Board that Weidert clearly shows the elements of the structure claimed in rejected claims 35 and 37. His camera is an "image-forming optical assembly" having (1) an "optical axis,"

(2) an "image area of fixed boundaries" corresponding to the photosensitive film, upon which broken line rays are shown to converge, (3) an "object area" in front of the lens, (4) an "aperture" in the diaphragm or adjustable lens stop, and (5) an "optical mask" having an "opening through which passes the optical axis."

Hence, the question here is whether or not the size and positioning of the mask as defined in the appealed claims patentably distinguishes appellants' invention over the structure disclosed by Weidert. We think not.

The Board was correct in concluding that Weidert discloses appellants' structure and any distinctions recited in the appealed claims are merely obvious variations in design dictated by the purpose for which the optical system is to be used.

Contrary to appellants' assertion, we think Weidert's mask would correct distortion due to coma or astigmatism in the same manner as their mask, although Weidert makes no mention of these specific aberrations. However, Weidert does describe the cutting off of noncorrected marginal rays of oblique pencils of light which have the effect of producing marginal chromatic aberrations in the image if not cut off. Such chromatic aberration caused by oblique light pencils clearly comes within the broadly recited term "extra-axial aberrations" set forth in the appealed claims.

Accepting the appealed claims and appellants' assertions with respect thereto, at face value, it seems to us that appellants are asserting patentability of the claims over Weidert on the assumption that Weidert's results were accidental, not intended and not appreciated. We do not agree with the validity of that assumption. It seems to us that Weidert's disclosure not only shows the mask which acts as a corrector for his image-forming optical assembly but also discloses that such a mask cuts off the marginal rays and thus corrects what otherwise would be "chromatical aberrations" in the image.

These facts clearly distinguish the present case from the case of Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, upon which appellants have placed reliance. In the present case, not only the structure but the purpose for the structure is clearly taught by Weidert. In the Eibel Process case, the court clearly stated:

we find no evidence that any pitch of the wire, used before Eibel, had brought about such a result as that sought by him, and in the second place if it had done so under unsual conditions, accidental results, not intended and not appreciated, do not constitute anticipation. * *

Here, we think Weidert clearly discloses the structure claimed by appellants as well as teaching the art that such structure would cut down the image distortion due to lens aberrations. Under these circumstances we do not regard Weidert's disclosure as the disclosure of appellants' invention under "unusual conditions" producing "acci

dental results, not intended and not appreciated," which the Supreme Court stated did not constitute anticipation.

All the structural elements of the combination as claimed in the appealed claims are found in the Weidert reference performing the same functions and operating in substantially the same way as claimed by appellants. The differences set forth in the claims on appeal as asserted by appellants do not patentably distinguish the claims over the Weidert reference. Such differences as, for example, the positioning of the mask, depend upon the arbitrary selection of values for the acceptable circle of confusion, etc., after which they are but matters of routine design which we think would be obvious to one of ordinary skill in this art at the time appellants made their alleged invention.

[1] For the foregoing reasons the decision of the Board is affirmed. AFFIRMED.

WORLEY, Chief Judge, did not sit or participate in the decision.

U.S. Court of Customs and Patent Appeals

IN RE ESSO STANDARD OIL COMPANY

No. 6771. Decided August 2, 1962

[49 CCPA 1351; 785 O.G. 364; 305 F.2d 495; 134 USPQ 402]

1. TRADEMARK-REGISTRABILITY-BACKGROUND DISPLAY ON A LABEL-In re Swift

& Co. APPLIED.

"In our judgment we have a controlling precedent in In re Swift & Co., 42 CCPA 1048, 223 F.2d 950, 106 USPQ 286 (1955). The mark there, as illustrated in our opinion, was the design portion or background display of a composite mark on a cylindrical can of household cleanser. The mark sought to be registered consisted of the background of a covering label having horizontal bands of color, consisting of, from top to bottom, a narrow red band, a wide white band, a not quite so wide bottom red band. The two red bands were covered with small white dots to produce a polka dot pattern. This court held the mark to be distinctive as a combination of elements making up an arbitrary and distinctive design capable of functioning as a trademark within the so-called definition of trademarks in the Lanham Act, section 45 (15 U.S.C. 1127), and according to the concept of a trademark as stated in Columbia Mill Company v. Alcorn, 150 U.S. 460. We are unable to see how any distinction can be made, in principle, between the Swift case and the instant case. We consider the red, white and blue 'ESSO' label with its distinctive proportions and arrangement of elements to be inherently distinctive. *** We hold that on its face appellant's mark is a trademark and is registrable subject matter."

APPEAL from the Patent Office. Serial No. 19,010.

REVERSED.

Francis C. Browne, Mead, Browne, Schuyler & Beveridge (William E. Schuyler, Jr. and Andrew B. Beveridge of counsel) for appellant.

666700-63-41

Clarence W. Moore (George C. Roeming of counsel) for the Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, A880ciate Judges, and Judge WILLIAM H. KIRKPATRICK, United States Senior District Judge for the Eastern District of Pennsylvania RICH, J., delivered the opinion of the court.

Esso Standard Oil Company appeals from the affirmance by the Trademark Trial and Appeal Board of the denial of registration on the Principal Register of the design features of the label used on its "Esso" motor cleaner (124 USPQ 77), application Ser. No. 19,010, filed November 9, 1956, alleging first use in "commerce" in January

1950.

The Mark

The following is a reproduction of the application drawing, which is lined for color according to Patent Office rules:

What it depicts is a development, on a flat surface, of a label background which, in use, is on a cylindrical surface such as that of a 1-quart can of the type in which motor oil is commonly sold in gas stations. Motor cleaner is named in the application but the can used is of the same type as is used for motor oil.

Thus developed and illustrated, the label has four horizontal colored bands, two oval frames, and four little dots. The top band is bright red. The band below it is white. The next band is narrow red stripe and the bottom band is dark blue. The two oval frames are dark blue, are positioned about 80% in the top red band and 20% in the white band, and are so spaced that they will appear, in use, on opposite sides of the can. Above each oval frame is a small white dot and below each frame, in the white band, is a small red dot.

In actual use there is printing on the label. "Esso" appears in each oval frame. Under each frame and above the red dot the name of the product, "MOTOR CLEANER," appears in large letters. Instructions for use and the like appear on the sides in small print.

It is evident that what appellant seeks to register is the appearance of the sidewall of the container for the goods, the design of its total