expressly reversed the rejection by the examiner on one reference, but affirmed him upon the other. In our decision we said:

* We therefore have to consider only the reference Klein et al., the board having expressly reversed the examiner with respect to the reference Teague.

The well established rule is that where the Board of Appeals has affirmed a decision of the examiner, which decision rejected the claims of an applicant on certain grounds and upon certain named references, which grounds and references are also cited by the board in its decision, the affirmance should be held to have the legal effect of a rejection upon all of the grounds and references cited by the examiner except those expressly reversed by the board. In re Wagenhorst, 20 C. C. P. A. (Patents) 991, 64 F. (2d) 78; In re Emanueli, 21 C. C. P. A. (Patents) 701, 67 F. (2d) 445; In re Lilienfeld, 21 C. C. P. A. (Patents) 792, 67 F. (2d) 920; In re Sponable, 21 C. C. P. A. (Patents) 958, 69 F. (2d) 544.

It follows from the foregoing that, inasmuch as the reasons of appeal do not include all of the grounds of rejection of the involved claims by the examiner, but only one of them, and as the board did not expressly reverse the decision of the examiner upon such other grounds of rejection by him, the decision of the Board of Appeals must be affirmed.

However, while not necessary to our decision herein, we would observe that we are in agreement with the Board of Appeals and the examiner with respect to the specific ground of rejection complained of by appellant.

While appellant's counsel concedes that appellant's specification does not mention the function of arc suppression in the device disclosed by him, he contends that such function is inherent in the device, and he introduced into the record several affidavits stating that devices constructed in accordance with his disclosure do in fact have the function of arc suppression. Upon this point we agree with the board that while such structures may suppress arcing, structures may be produced strictly in accordance with appellant's disclosure which would not possess such function, inasmuch as no dimensions of the openings in the hood are disclosed, and it is clear to us that they may be of sufficient size as to be ineffective to suppress arcing. It therefore cannot be said that the function of suppression of destructive arcing is inherent in the device disclosed by appellant.

For the reasons stated herein, the decision of the Board of Appeals is affirmed.

465 O. G. 724; 23 C. C. P. A. 834; 81 F. (2d) 231

IN RE BARBER (No. 3569)

PATENTS-DESIGNS-DOUBLE PATENTING.

An analysis of claim 1 of appellant's mechanical patent No. 1,894,147 establishes that substantially the design here involved would necessarily be produced in a structure embraced in said claim. There were not two inventive ideas involved in the production of appellant's bottom cap and hanger ring, but only one, and appellant has been granted a mechanical patent for that invention.

United States Court of Customs and Patent Appeals, January 27, 1936

[Affirmed.]

APPEAL from Patent Office, Serial No. D-41901

Frederick Griswold, Jr., for appellant.

R. F. Whitehead (Howard S. Miller of counsel) for the Commissioner of Patents.

[Oral argument January 8, 1936, by Mr. Griswold, Jr., and Mr. Miller] Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges

LENROOT, Judge, delivered the opinion of the court:

This is an appeal from a decision of the Board of Appeals of the United States Patent Office, affirming a decision of the examiner, denying to appellant a design patent upon his application filed November 28, 1931. Said application contains a single claim, reading as follows:

The ornamental design for a combined flashlight cap and hanger ring as shown and described.

The examiner rejected appellant's application upon two grounds, viz., non-patentability over the prior art, in connection with which ground of rejection a number of references were cited by the examiner, and also upon the ground that appellant was estopped by his mechanical patents from receiving the design patent applied for. Upon appeal, the Board of Appeals expressly reversed the examiner upon the ground of rejection because of non-patentability over the prior art, but affirmed his rejection upon the ground of estoppel. Accordingly, we are here concerned only with the issue of estoppel thus presented. Of the patents relied upon by the examiner in support of the rejection upon the ground of estoppel, only one was discussed by the board, this being appellant's patent No. 1,894,147, issued January 10, 1933, upon an application filed December 20, 1928. The examiner relied also upon another mechanical patent to appellant, No. 1,863,151, issued June 14, 1932, upon an application

filed March 20, 1929; this patent was not mentioned in the decision of the Board of Appeals, other than to be included in the list of patents cited by the examiner. It will be observed that the instant application was copending with those applications which resulted in the issue of the above-mentioned patents.

The instant application contains drawings illustrating the design sought to be patented. Figure 2 of the drawings shows a form of screw-on cap for the base of a flashlight. There is a depressed groove, substantially rectangular in shape, extending diametrically across said cap, the groove being formed in such manner that it projects inwardly toward the interior of the flashlight cylinder when the cap is in place. As a result of this rectangular groove, two segmental surfaces remain in the original plane of the cap, one on each side of said groove. These segmental portions provide surfaces upon which the flashlight can be stood upright when the so-called hangerring, later referred to, is in closed position. In said Figure 2 is also shown a hanger-ring, evidently formed of wire or similar material. This ring is in the shape of a “U” and has its ends turned outwardly at right angles to the longer sides of the ring, which they terminate. These outwardly-projecting ends are shown in said drawing to be inserted in apertures through the walls of the groove in the cap, near one end of said groove. These apertures serve as bearings for said projections on the ring and permit the pivoting of said ring therein, so that it may be opened or drawn out from its recess in the cap, for use in hanging the flashlight, or may be closed or pushed back into said recess or groove when not required. Two slight projections in the side-walls of the groove function to retain the ring in its closed position when it is snapped into the groove against the tension exerted by such side-wall projections. The shape of the ring is substantially the same as that of the groove in the cap, and it fits snugly therewithin when pushed into closed position.

The examiner held that the essence of the claim under consideration here was substantially covered by claim 1 of each of said Barber patents, particularly patent No. 1,894,147. Said claim 1 of the patent reads as follows:

1. A flashlight bottom cap having a bottom surface formed with a rectilinear single wide groove with substantially straight sides extending diametrically through the bottom surface of the end of the cap without obstructions, and a hanger substantially as wide as the groove pivoted within the groove and lying below the bottom surface.

Figure 2 of the drawings of said patent shows substantially the same type of flashlight cap, the only difference being that the ends of the hanger-ring are turned at right angles in the opposite direction to that shown in the instant application; that is, they are turned

towards each other. These ends, instead of being inserted into holes in the side walls of the groove, as shown in the instant application, are inserted into a substantially tubular shaped bearing member inserted in one end of the groove, passing through the bottom of the cap and being fastened on the inside thereof. However, figure 5 of said patent shows an alternative method of pivoting the hanger ring which corresponds to that shown in the instant application and hereinbefore described.

The only question here involved is whether the allowance of the instant application would result in double patenting; or, in other words, does the appellant here claim the same invention for which he was granted a patent, No. 1,894,147?

It is well established that the mere fact that a design sought to be patented may involve some mechanical or utilitarian function does not render it unpatentable, but the "invention must relate to the design and be distinguishable from the mechanical function involved." In re Montagne, 19 C. C. P. A. (Patents) 880, 55 F. (2d) 486.

It is also well established that while, as a matter of law, one may have a mechanical patent and a design patent upon the same subject matter, there must be a clear patentable distinction between the two; or, in other words, they must involve different inventions. In re Hargraves, 19 C. C. P. A. (Patents) 784, 53 F. (2d) 900. In the case last cited we said:

When the two ideas are indistinguishable in their characteristics, and manifestly the result of the same inventive idea, a second patent will not be granted.

An analysis of claim 1 of appellant's mechanical patent, abovequoted, convinces us that substantially the design here involved would necessarily be produced in a structure embraced in said claim. If this be true, it seems clear to us that there were not two inventive ideas involved in the production of appellant's bottom cap and hanger ring, but only one, and appellant has been granted a mechanical patent for that invention.

In other words, we think that the two ideas of the design here involved and the structure embodying the mechanical invention are indistinguishable in their characteristics, and are manifestly the result of the same inventive idea. Appellant states in his brief that:

The design patent application covers an end cap in which the groove is wide enough to divide the end surface of the cap into three panels substantially proportional in area, one rectangular and two in the shape of segments of circles, the definition between them being caused by the central rectangular panel being recessed. [Italics quoted.]

However said claim 1 of the appellant's patent, hereinbefore quoted, contains the element of "a rectilinear single wide groove with substantially straight sides;" in view of this we fail to see where appellant's counsel in the above quoted matter has stated a patentable distinction.

For the reasons stated herein, the decision of the Board of Appeals is affirmed.

465 O. G. 246; 23 C. C. P. A. 837; 81 F. (2d) 399

In re Keller, HEUMANN & THOMPSON CO., INC. (No. 3570)

TRADE MARKS-REGISTERABILITY-GOODS

OF SAME DESCRIPTIVE PROPERTIES.

The goods of appellant to which its trade mark is applied are of the same descriptive properties as the shoes for which the identical mark had been previously registered.

United States Court of Customs and Patent Appeals, January 27,

[Affirmed.]

1936

APPEAL from Patent Office, Serial No. 347,857

Harold E. Stonebraker for appellant.

R. F. Whitehead (Howard S. Miller of counsel) for the Commissioner of Patents.

[Oral argument January 8, 1936, by Mr. Stonebraker and Mr. Miller] Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges

LENROOT, Judge, delivered the opinion of the court:

This is an appeal from a decision of the Commissioner of Patents, affirming a decision of the examiner, denying appellant's application for registration of the mark "TIMELY" as a trade-mark for men's suits, topcoats, and overcoats, made from cloth or woolen fabrics.

The basis of the rejection of appellant's application, by both of the Patent Office Tribunals, is registration No. 291,742, issued February 23, 1932 to F. M. Hoyt Shoe Corporation, said registration being for the mark "TIMELY" as a trade-mark for "Boots and Shoes made wholly or in part of leather, fabrics, or combinations thereof." The word "TIMELY" in said registration is shown to be in capital letters, the horizontal line of the "T" being extended in something of a flourish over most of the balance of the word; similarly, the tail of the "Y" concluding the word is extended back and beneath the two preceding letters of the word. The mark as shown in appellant's application is formed of ordinary block letters.