The object of the invention is to provide a simple and cheaply constructed device which * * * will possess sufficient strength to hold heavy portieres and still be sufficiently inconspicuous to support light curtains as well. In a similar vein, Dickey et al. states: The molding-strip *** is or may be composed of wood, usually of the same kind of wood as the interior finish of a room, and is adapted to be secured to the casing of a door or window, * Particularly in view of those quoted comments in the Moore and Dickey et al. patents, we think it would be obvious to a person of ordinary mechanical skill that the T-slots of those patents might be embodied directly in the structural member of a door or window, thereby leaving the decorative appearance of the structure almost wholly undisturbed. Appellant concedes that decisions have generally supported the rejection of claims involving the integration of elements which previously were in two or more parts. It is urged, however, that there are exceptions, appellant citing In re Otto and Heinrich, 28 CCPA 1326, 121 F.2d 553, 50 USPQ 149, and In re Hubbell, 35 CCPA 782, 164 F.2d 700, 76 USPQ 105. We do not find those cases cited by appellant to be in point here. In In re Otto et al., this court found patentable invention in a multiple V-groove adjustable diameter sheave in which the effective pitch diameter was changed by moving one set of conical disks axially with reference to another set of conical disks. The sheaves were so positioned as to form grooves to fit V-shaped belts. The sole question raised in this court was the correctness of the Board's holding that it would not involve invention to make the prior art sleeves integral with the slidable disks. Applicants pointed out that the prior art sheaves were subject to great stress and strain and inevitably received a great deal of hard use and abuse. It was especially desirable to have a device that had the characteristics of ruggedness and that could be easily assembled. Applicants urged that their structure, being more unitary than any other device known to the art, would stand stresses and strains without injury, and that their structure possessed the merits of ease of assembly and cheapness of manufacture. In that case, this court said: *** Something more has been accomplished than merely making one piece out of two. One piece has been made of two under circumstances where beneficial results admittedly are obtained and, in our opinion, bringing about these results required more than the exercise of mere mechanical skill. It seems to us that in the light of appellants' teaching the structure of the sheave itself has not only been improved but that its durability and ruggedness will result in a great saving in the life of belts used upon the device. * * On the other hand, we find no advantages in the case at bar other than those one would expect to find in the mere placing of the T-slots in the structural member. In In re Hubbell, supra, this court found patentable invention in claims to a furnace having a one-piece refractory lining. The reference patent to White recognized the desirability of eliminating joints in the lining, but in its disclosure merely reduced the number of joints without eliminating all of them. Applicant supplied four affidavits by parties who were using applicant's device. Three of those affidavits were by disinterested parties. The affiants had formerly used the prior art devices or the White device and they pointed out particulars in which applicant's liner was far superior to the others stating in detail the many advantages flowing from the use of the one-piece liner. Although those advantages were recognized by the Patent Office, it still maintained that since it involved a mere integration of two elements, patentability was not present. However, this court found that the integration caused those advantages and therefore patentability was warranted because there was much more than just the anticipated advantages of integrating two elements. In that case this court said: The parties making the affidavits of record, being users of appellant's device and who so highly commend it, never thought of doing what appellant did, notwithstanding White's suggestion and their familiarity with the White device, and it seems to us that it was the unobvious thing to do and no doubt was the successful result of a trial which had been intentionally avoided by others. The facts of that case offer no precedent for a finding of patentable invention in the instant case. It seems to us that In re Lockhart, 38 CCPA 1195, 190 F.2d 208, 90 USPQ 214, applies to the present situation. Therein this court found claims to a three-piece hypodermic syringe unpatentable. The syringe disclosed in that application was composed of a metal holder, a cylindrical ampule containing a medicament, and a hollow needle. The prior art showed a hypodermic syringe similar to applicant's syringe. However, the tubular body, the thrust portion, and the needle mount, which were integral in applicant's structure, were all separate in the prior art structure. Applicant appeared not to deny that the different elements found in the appealed claims were found in the references. However it was contended that the integral combination of those elements was not found nor suggested in any of the references and that without integration of parts, it was impossible to achieve the inventive combination of applicant's structure. In that case this court did not find itself in agreement with applicant's argument and stated: *** Although it is true that invention may be present under some circumstances in making integral that which was separate before, we do not feel that such is the case here. Improved results only will not take the case out of the general rule. There is also a requirement that the unification or integration involve more than mere mechanical skill. Appellant points out that the prior art constructions existed for more than twenty-five years before the effective date of the present application in 1942,1 and that in spite of this, the art had to wait this length of time for the invention. We find no support for that contention. In view of our conclusion that the claims define nothing patentable over the prior art, it is unnecessary to consider the additional ground of res judicata also relied on by the Patent Office. See In re Busch, 45 CCPA 766, 251 F.2d 617, 116 USPQ 413. [1] The decision of the Board is affirmed. AFFIRMED. U.S. Court of Customs and Patent Appeals ROYAL CROWN COLA Co. v. SWEETIE BEVERAGES, INC. No. 6842. Decided November 14, 1962 [50 CCPA -; 785 O.G. 739; 309 F.2d 503; 135 USPQ 323] 1. TRADEMARK-CONFUSING SIMILARITY-"ACE HIGH" AND "NEHI." "We do not think that ACE HIGH so resembles NEHI that use by appellee of ACE HIGH on its goods is likely to confuse the purchasing public. NEHI and ACE HIGH certainly do not have the same appearance. As to their respective meanings, we find significant differences there also. We believe that ACE HIGH suggests a most superior product and NEHI, if it means anything at all, would suggest something short, being mentally associated with 'knee high' or, to one who is familiar with the expression 'knee high to a grasshopper,' it might be associated with that phrase. Furthermore, NEHI and ACE HIGH do not sound alike. There may be some merit to appellant's contention that the suffix HI is an important and distinctive, if not dominant, feature of its mark, but that contention is not of sufficient weight to overcome the determining significance of the other factors we have previously discussed." APPEAL from the Patent Office. Opposition No. 38,616. AFFIRMED. Parker and Walsh, Raymond A. Walsh, for appellant. Caesar & Rivise, A. D. Caesar (Alan H. Bernstein and Stanley H. Cohen of counsel) for appellee. Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Associate Judges, and Associate Judge JOSEPH R. JACKSON, retired MARTIN, J., delivered the opinion of the court. This is an appeal from the decision of the Patent Office Trademark Trial and Appeal Board dismissing an opposition to registration of the words ACE HIGH as a trademark for root beer. The applicant, appellee here, is the Sweetie Beverages, Inc. Use of the mark by appellee since 1956 is alleged. The opposer-appellant, 1 The application states: This application is a continuation of my application Serial No. 350,670, April 23, 1953, which in turn is a continuation of my application Serial No. 716,531, filed December 16, 1946, which in turn is a division of application Serial No. 448,405, filed June 25, 1942, now Reissue Patent No. 23,209. Royal Crown Cola Co., is the owner of the registered mark NEHI for nonalcoholic, maltless beverages sold as soft drinks, and syrups and extracts for making the same and for a chocolate flavored milk drink and concentrates for making the same." Appellant and its predecessors have since October 1924 produced beverage syrups and concentrates which they and franchised bottlers have continuously used in making soft drinks, including root beer, sold under the mark NEHI. NEHI soft drinks have been extensively advertised and sold by appellant, its predecessors and its franchised dealers. There is no dispute that appellant is the prior user of its mark or that appellee's mark sought to be registered is used on the same type of goods as the goods on which appellant uses its trademark. The only issue is whether ACE HIGH so resembles the trademark NEHI as to be likely, when applied to appellee's root beer, to cause confusion or mistake or to deceive purchasers within the meaning of 15 U.S.C. 1052. The Board answered that question by stating: ** "ACE HIGH" and "NEHI," however, are distinctly different marks. They do not look alike and while they may be somewhat similar in sound, they are nevertheless readily distinguishable in that respect. Moreover, "ACE HIGH" unlike opposer's mark "NEHI" is a dictionary term which has a well known connotation of excellence. Appellant urges several reasons for reversal of the Board's decision. It points out that the marks at issue consist solely of two syllables, the last of which, namely, the suffixes HI and HIGH are phonetically identical and also that, in addition to the identity of the suffix in each case, there is a marked similarity in the sound of the entire marks when they are pronounced. It is urged that the suffix HI is an important and distinctive, if not dominant, feature of appellant's mark and that the public is likely to observe and remember a distinctive suffix of a trademark. Although the two marks may be distinguished if examined side by side, it is argued that the test of deceptive similarity is not side by side comparison but memory comparison. Appellant further argues that the likelihood of confusion between NEHI and ACE HIGH is increased by the character of purchasers and circumstances surrounding the purchase of soft drinks and by the low retail price of the goods. Appellee, on the other hand, urges that NEHI and ACE HIGH do not look alike. It is pointed out that while NEHI is a small unitary term, ACE HIGH consists of two words, that is, the distinctive word ACE and the word IIIGII which is a dictionary word and has been properly spelled. It is also contended by appellee that ACE is radically different in sound from the first syllable NE of appellant's mark 1 Reg. No. 207.317, issued December 29, 1925 to a predecessor; renewed; and Reg. No. 556.003, issued Mar. 11, 1952. a Reg. No. 553,227, issued January 8, 1952. and that HIGH and III are not always identical in pronunciation, the pronunciation depending upon the origin and environment of the users. Therefore, urges appellee, ACE HIGH and NEHI do not sound alike. Appellee points out that the average purchaser of a soft drink will exert the same relatively high degree of care as he would in selecting any other kind of food and that this fact extenuates in the purchaser's mind the differences in sound, appearance and commercial impression between the respective marks, with the result that the marks serve readily to distinguish the goods of the parties rather than to create any likelihood of confusion. [1] We agree with the Board. We do not think that ACE HIGH so resembles NEHI that use by appellee of ACE HIGH on its goods is likely to confuse the purchasing public. NEHI and ACE HIGH certainly do not have the same appearance. As to their respective meanings, we find significant differences there also. We believe that ACE HIGH suggests a most superior product and NEHI, if it means anything at all, would suggest something short, being mentally associated with "knee high" or, to one who is familiar with the expression "knee high to a grasshopper," it might be associated with that phrase. Furthermore, NEHI and ACE HIGH do not sound alike. There may be some merit to appellant's contention that the suffix HI is an important and distinctive, if not dominant, feature of its mark, but that contention is not of sufficient weight to overcome the determining significance of the other factors we have previously discussed. We find nothing in the infringement action in Nehi v. Becker et al., 3 Fed. Supp. 94, which would have any material bearing on the facts and issues here. For these reasons we affirm the decision of the Board. U.S. Court of Customs and Patent Appeals IN RE EDWARD BURTON LE GRICE Nos. 6727 and 6728. Decided May 4, 1962. Petition for rehearing denied July 11, 1962 [49 CCPA 1124; 785 O.G. 741; 301 F.2d 929; 133 USPQ 365] 1. PATENTABILITY-REFERENCES-PRINTED PUBLICATION-35 U.S.C. 102(b). "Thus, the statute expressly prohibits the granting of a patent on an invention or discovery which has been 'described in a printed publication * * * more than one year prior to the date of the application for patent in the United States.' Long prior to the inclusion of this provision in 35 U.S.C. 102(b), the courts had construed earlier provisions and had interpreted them with regard to what must be described in a printed publication in order for the publication to be a bar to the grant of a patent. The underlying concept on which the courts permitted such a bar is that the description of the invention in the printed publication was sufficient to give possession of the invention to the public." |