Following the interference, Luxmore amended his application to include the claims involved in this suit. They were rejected by the Patent Office as not being patentable over the Carlton patent and a patent to one Graft. The holding of the Patent Office was sustained by the court below. Claims 25 and 29 are illustrative of the claims. here in issue and are as follows:

25. The method of making an abrasive article which includes as steps thereof, employing a backing, applying a synthetic resinous presizing coating to said backing and permitting the same to partially set, then applying a binder and a coating of similar material and grit to said backing to form the complete abrasive article.

29. The method of making an abrasive article which includes as steps thereof, employing a backing, applying a synthetic resinous condensation product in a volatile thinner to penetrate the backing and saturate the fibres, airdrying the sheet so treated to partially set the resinous impregnating coating, applying a binder coat of a synthetic resinous composition, partially setting the binder coat so applied, anchoring a grit or layer of abrasive particles in the binder coat and then finally baking the article so made.

The novelty in these claims, if there be such, over what is shown in the prior art, consists in allowing the presizing coating partiaily to set and, before it becomes hardened, applying the binding coat to which the abrasive substance is applied. It is contended that Carlton's invention calls for only a single coat before the application of the abrasive substance, but an examination of the specification of the Carlton patent discloses the following statement:

I have found in practice that the number of coats of the binder may also beneficially be varied

*

I have also discovered that my improved binder may be suitably modified to permit its beneficial use as an auxiliary coating for waterproofing one or both sides of the base,

*

*

It thus appears that Carlton was the originator of the idea of applying more than one coat as a base for the abrasive substance. In other words, he discloses the use of phenolic condensation as the binding substance and the use of more than one coat.

The only distinction which can be made in favor of Luxmore is the failure of Carlton to disclose in his specification whether the first coat is to be dried, partially dried, or not dried at all. It is upon this distinction that Luxmore rests his case.

The Patent Office held that Luxmore could not be permitted to obtain a patent, since his claimed invention was not inventively different from the prior work of Carlton. In the original Luxmore application the invention now claimed was not even suggested. The only reference to a partial drying process was as follows:

After the aforesaid impregnating operation has been accomplished, the sheet is permitted partially to dry,-say for about thirty minutes at room temperature.

In holding that the claims in issue defined nothing patentable over the patent to Graft, and in view of the patent to Carlton, the Examiner said:

Graft discloses the practice of impregnating the flexible backing in the first operation with a waterproofing adhesive material and then applying as a second step a second coating of the same adhesive material as a binder for the grit. The expedient of applying the second coating before the first coating is entirely dry is not considered to be a patentable variation of Graft's method. It would seem to be obvious that an adhesive would more readily adhere to a soft tacky surface of the first coating than it would to a hard smooth surface formed by thoroughly drying the first coating. Patent to Carlton discloses the use of a synthetic resin as an adhesive for attaching abrasive grains to a backing and no invention is seen in substituting Carlton's resinous adhesive for Graft's waterproofing and grit attaching adhesive. Carlton further discloses the practice of setting or curing the resinous adhesive by baking.

[1] We think, on the whole case, that the Patent Office and the court below were right in holding that the advance in the art here claimed by Luxmore is so apparent to one skilled in the art as to deprive it of the character of invention. The disclosures in the specifications of each of the parties are such as to indicate a process which would produce the common result which each of the inventors was seeking.

[2] The rule of obviousness applied in patent cases is much stricter than the general idea of something which readily presents itself to the eye of everyone as obvious. The rule in patent cases is well stated in Tolfree v. Wetzler, 22 F. (2d) 214, 223:

The test is what is obvious to a person skilled in the art and açquainted with the common knowledge in that art at the date of the patent.

Inasmuch as Graft, Carlton and Luxmore were each seeking a common end, we think that to those skilled in the art the claimed advance made by Luxmore would amount to nothing more than an obvious step to accomplish the end desired. The decree is affirmed.

[U. S. Court of Appeals for the District of Columbia]

THE HYGIENIC PRODUCTS COMPANY v. CONWAY P. COE, COMMISSIONER OF PATENTS

No. 6,467. Decided June 1, 1936

469 O. G. 765; 85 F. (2d) 264

1. TRADE-MARKS-SECTION 4915 R. S.-JURISDICTION.

Under section 4915 R. S. as amended by the act of March 2, 1927, a party who has been refused a patent has an alternative remedy either to appeal to the Court of Customs and Patent Appeals or to proceed by an equity suit under the provisions of section 4915 R. S. Under the decision of the Supreme Court

of the United States in Baldwin Co. v. Robertson, 265 U. S. 168, section 4915 R. S. is applicable to trade-marks and the party who has been refused registration of his mark by the Commissioner may either appeal to the Court of Customs and Patent Appeals or proceed by a bill in equity. (Decision in Parker-Kalon Corporation v. Coe, November 4, 1935, overruled.)

It is settled law that color may constitute a valid trade-mark provided it is impressed in a particular design such as a circle, square, triangle, a cross, or a

star.

3. SAME YELLOW PANEL BOUNDED BY BLUE BORDER-REGISTRABILITY.

A mark for a cleaning powder for water closet bowls and automobile radiators consisting of a yellow panel bounded by a contrasting dark blue border Held registrable.

APPEAL from the Supreme Court of the District of Columbia.

Decree reversed.

ROBB, J., dissenting on question of jurisdiction.

Mr. Randolph C. Richardson and Mr. Harry Frease for The Hygienic Products Company.

Mr. T. A. Hostetler and Mr. R. F. Whitehead for the Commissioner of Patents.

Before MARTIN, Chief Justice, and ROBB, VAN ORSDEL, GRONER, and STEPHENS, Associate Justices

VAN ORSDEL, A. J.:

Appellant company, plaintiff below, appeals from a decree of the Supreme Court of the District of Columbia dismissing its bill in a suit brought under section 4915, R. S. (35 U. S. C. A. sec. 63) to require the Commissioner of Patents to register a trade-mark for cleaning powder for water closet bowls and automobile radiators.

[1] At the threshold we are confronted with a question of jurisdiction; namely, whether a defeated applicant for registration of a trade-mark must first appeal from the decision of the Commissioner of Patents to the United States Court of Customs and Patent Appeals, and whether if he is there unsuccessful he may then proceed in equity under section 4915 R. S. (35 U. S. C. A. sec. 63). Our recent decision in Parker-Kalon Corporation v. Coe (decided November 4, 1935) [86 F. (2d) 31] sustains this view. That decision, on the other hand, is challenged as being in conflict with former decisions of this court and of the Supreme Court of the United States. Appellant avers in its bill of complaint that "no appeal from the refusal of the Commissioner of Patents has been taken to the United States Court of Customs and Patent Appeals." This was alleged as ground of jurisdiction in the court below.

In determining this question, it is proper briefly to review the state of the law prior to the act of Congress of March 2, 1927 (44 Stat.

1335). Section 9 of the Trade-mark Act of 1905 (33 Stat. 727; 15 U. S. C. A. sec. 89) provided as follows:

If an applicant for registration of a trade-mark, or a party to an interference as to a trade-mark, or a party who has filed opposition to the registration of a trade-mark, or a party to an application for the cancellation of the registration of a trade-mark, is dissatisfied with the decision of the Commissioner of Patents, he may appeal to the Court of Appeals of the District of Columbia, on complying with the conditions required in case of an appeal from the decision of the commissioner by an applicant for a patent, or a party to an interference as to an invention, and the same rules of practice and procedure shall govern in every stage of such proceedings, as far as the same may be applicable.

Section 4915, R. S., prior to the act of March 2, 1927, provided that, where an application for a patent was refused by the Commissioner of Patents, appeal lay to the Court of Appeals of the District of Columbia and that if the applicant were there defeated, he might then proceed by bill in equity in "the court having cognizance thereof”.

In this situation the right of an applicant for registration of a trade-mark, whose claim had been denied by the Court of Appeals of the District of Columbia on appeal from the Commissioner of Patents, to proceed in equity under section 4915 was very fully reviewed by Chief Justice Taft in American Foundries v. Robertson, 262 U. S. 209, 324 O. G. 963, and was affirmed in the later case of Baldwin Co. v. Robertson, 265 U. S. 168, 327 O. G. 5. In the latter case the Court of Appeals of the District of Columbia (52 App. D. C. 368) directed the dismissal of a bill in equity in the Supreme Court of the District on the ground that the court was without jurisdiction to review in equity the decision of the Commissioner of Patents in a trade-mark proceeding. In other words, we held that the right to proceed in equity, under section 4915, applied only to patent cases. The Supreme Court reversed the decision of this court and held that the right to proceed in equity under section 4915, R. S. applied to both patent and trade-mark proceedings. In the course of its opinion the Supreme Court said (p. 179):

We have held that the assimilation of the practice in respect of the registration of trade-marks to that in securing patents as enjoined by sec. 9 of the Trade-Mark act makes sec. 4915, Rev. Stats., providing for a bill in equity to compel the Commissioner of Patents to issue a patent, applicable to a petition for the registration of a trade-mark when rejected by the Commissioner. American Steel Foundries v. Robertson, 262 U. S. 209; Baldwin Co. v. Howard Co., 256 U. S. 35, 39; Atkins & Co. v. Moore, 212 U. S. 285, 291.

After pointing out the four grounds enumerated in section 9 of the Trade Mark Act on which appeal lies to the District Court of Appeals, the court said:

The next inquiry is whether, in addition to such appeal and after it proves futile, the applicant is given a remedy by bill in equity as provided for a defeated

applicant for a patent in sec. 4915, Rev. Stats. We have in the cases cited given the closing words of sec. 9 a liberal construction in the view that Congress intended by them to give every remedy in respect to trade-marks that is afforded in proceedings as to patents, and have held that under them a bill of equity is afforded to a defeated applicant for trade-mark registration just as to a defeated applicant for a patent. It is not an undue expansion of that construction to hold that the final words were intended to furnish a remedy in equity against the Commissioner in every case in which sec. 9 an appeal first lies to the Court of Appeals.

This decision clearly determined, in the light of the law as it then existed, that there was no distinction between a patent and a trademark case under the parallel procedure provided by section 4915, R. S., and section 9 of the Trade-Mark Act.

This brings us to a consideration of the act of March 2, 1927, whereby section 4911, R. S. was amended to read, in part, as follows:

If any applicant is dissatisfied with the decision of the Board of Appeals, he may appeal to the Court of Appeals of the District of Columbia, in which case he waives his right to proceed under section 4915 of the Revised Statutes.

This ended the right of double appeal in patent cases, first to the Court of Appeals of the District of Columbia and, if there defeated, through a suit in equity under section 4915. The same act amended section 4915, prescribing the procedure to be followed in the event an applicant for a patent, which has been refused by the Commissioner, elects to proceed in equity instead of by appeal to the Court of Appeals of the District of Columbia.

It will be observed that under this act provision was made for an alternative proceeding, either by appeal from the board of Appeals in the Patent Office to the Court of Appeals of the District of Columbia, or by a direct proceeding by bill in equity, but the applicant is in no case entitled to the benefit of both remedies. If he prosecutes his appeal to the Court of Appeals, he waives his remedy in equity. If he does not prosecute his appeal, he may proceed in equity. While section 4915 is amended in some other particulars, relating merely to procedure, there is nothing which could possibly operate to change the interpretation placed upon it with reference to trade-marks by the Supreme Court in the Baldwin case. Section 9 of the Trade-Mark Act was not in any manner changed or affected by the act of March 2, 1927.

Considering now the act of March 2, 1929 (45 Stat. 1475), we find that section 4915 and section 9 of the Trade-Mark Act were amended thereby in only one particular, as follows:

The jurisdiction now vested in the Court of Appeals of the District of Columbia in respect of appeals from the Patent Office in patent and trade-mark cases is vested in the United States Court of Customs and Patent Appeals

and [section] 4915 (section 63, title 35, United States Code) of the Revised Statutes, as amended, and section 9 of the act entitled "An act to authorize the registration of trade-marks used in commerce with foreign nations