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tention. It is clear to us that the invention set out in the counts is not so simple as to bring it within the rule contended for by appellant. Furthermore, there is not only no corroboration of the test being successful, but there is no corroboration of the claim that the internal construction of the device tested embodied all of the features of any count here in issue.

Upon this point, appellant in his brief states:

It is obvious that this construction must have embodied all the elements of counts 1, 2, and 10, or it would not have operated at all.

The difficulty with this statement is that there is no corroboration of appellant's testimony that it did operate at all; and surely, when we can not find that the device was successfully operated, there is nothing upon which to base a presumption, arising out of successful operation, that the device embodied the features of said counts.

We agree with the tribunals of the Patent Office that appellant has not established by a preponderance of evidence a reduction to practice of the invention embodied in any of the counts prior to appellee's filing date.

This brings us to the question of appellant's diligence in reducing to practice the invention involved in the counts. As already stated, both tribunals of the Patent Office found that appellant was lacking in such diligence at the time of appellee's filing date, August 20,

1920.

Although appellee, in his preliminary statement, alleged conception of the invention on or about April 1, 1918, he offered no proof, and therefore he must be held to his filing date for both conception and reduction to practice. This rule is so well settled as to require no citation of authority.

The first question, therefore, is whether appellant was diligent in reducing the invention to practice at the time that appellee entered the field, to wit, on August 20, 1920. If he was not, he can not prevail. Austin v. Johnson, 18 App. D. C. 83, 95 O. G. 2685.

While there is much evidence that appellant was diligent in attempting to perfect his invention, both prior and subsequent to appellee's entry into the field, there is no substantial evidence that he did anything toward perfecting it, or reducing it to practice, during a period of more than 18 months immediately prior to August 20, 1920, appellee's filing date, nor for a considerable time after said date.

Appellant introduced 38 exhibits, each bearing notations purporting to give the date that it was prepared. Many of these exhibits are sketches made by appellant, and many others are photographs.

There are no exhibits bearing any date between December 15, 1902, and August 20, 1920, appellee's filing date, except two printed bulletins each bearing date June 21, 1918, neither of which purports to describe any feature of the invention here involved; in fact, there are no exhibits bearing any date between December 15, 1902, and October 10, 1920, except the aforementioned bulletins. There are nine sketches made by appellant bearing dates between October 10, 1920, and January 18, 1921.

So far as the exhibits are concerned, they indicate activity by appellant between 1897 and 1902, some activity in 1918, and no activity between June 21, 1918, and October 10, 1920. Of course, the absence

of sketches during the period immediately before and after the appellee entered the field is only a circumstance bearing upon appellant's diligence, and, standing alone, proves nothing; but, considered in connection with the testimony in the case, such absence of sketches tends to confirm the conclusion of the Board of Appeals and the Examiner as to lack of diligence.

Appellant does testify that he talked with several persons about his invention and showed at least one of them his old 1902 blue print early in 1920, and also talked to one of such persons in June, 1920, and this is corroborated by three witnesses who testified in the case; but there is nothing in either the testimony of appellant or of any of the witnesses which establishes diligence upon the part of appellant at the time appellee entered the field.

[2] The testimony referred to does establish that appellant had not abandond or forgotten the invention which he claims to have conceived prior to that time, but there is no substantial evidence in the case that on August 20, 1920, or for more than a year before said date, appellant was active in any way in perfecting his invention or reducing it to practice; neither does the record disclose any facts that would excuse appellant from activity in this regard during said periods.

We think the record clearly supports the finding of the Board of Appeals that appellant had not reduced to practice the invention involved in the counts prior to August 20, 1920, appellee's filing date, and that appellant was not diligent in reducing his invention to practice at the time appellee entered the field. Therefore, as the filing by appellee of his application on August 20, 1920, was a constructive reduction to practice, priority of invention upon all the counts must be awarded to him and the decision of the Board of Appeals is affirmed.

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A claim for an ornamental design for an interior fitting of an automobile body Held properly rejected where the applicant's drawing shows only an automobile body door handle and it appears that the design would not apply to a great many articles embraced in the term " interior fittings of an automobile body."

LENROOT, J., specially concurs.

APPEAL from the Patent Office. Affirmed.

Mr. Stuart C. Barnes, Mr. Lacey Laughlin, Mr. Chas. M. Thomas, and Mr. Francis D. Thomas for Schnell.

Mr. T. A. Hostetler for the Commissioner of Patents.

BLAND, J.:

This is an appeal from the decision of the Board of Appeals of the United States Patent Office, affirming the decision of the Examiner, rejecting a claim for a design patent as follows:

The ornamental design for an interior fitting of an automobile body or similar article, substantially as shown.

There is also a statement in the specification as follows:

The design, as here shown, is applied to a handle, but it is also applicable to other fittings of an automobile.

The title suggested by the Examiner and approved by the Board was "automobile door handle or similar article."

Applicant's drawing shows a side and front view of an automobile body door handle, composed of two parts-a plate to be fastened to the inside of the door and a movable handle which fits into the plate. The handle resembles the ordinary door knocker handle in appearance. The drawing shows the handle to be about four inches long by one inch wide at the widest place, tapering to less than one-half inch at the lower end, the hand hold portion of same being curved downward and inward so as to present the appearance from a side view of about one-fourth of the circumference of a circle. circle. Aside from the lines, indentations, and raised portions making up the general shape and configuration of the article as a whole, there is but very little ornamentation on the same. It is designed to be placed in a vertical position on the door.

It is admitted that the design claimed is novel and involves invention, but the Examiner and the Board held that the design set forth in the claim was

too generic and indicates a wider range of embodiment of the design than the specific article illustrated in the drawing.

In the decision of the Board is found the following:

A design must be considered as an entirety and there is no such thing in a design patent as generic and specific claims. The patent is for the embodiment of a design in the form of the specific article illustrated. It may be that an infringer will adopt some definite, integral portion of the design which is novel and embody it in a different article but it is for the courts to determine whether he shall be held as an infringer.

All that can be covered by the design patent is the ornamental form given to the article of manufacture illustrated in the drawing.

The brief points out that in the interior of an automobile there are numerous articles of hardware and that the same design may be adapted to the different articles so that they will present a general resemblance or harmony of design but it is obvious that the design of the handle as a whole can not be used in a different article like an escutcheon plate or a robe rail, a lamp support, or even a different form of handle, but it is modified in each case to adapt it to the article although it still embodies some outstanding feature of the original design which produces a general resemblance throughout the whole set. Whether they are different designs or whether it is an infringement to use a prominent part of the design in an article of different shape and for a different use can be determined only by the court when the matter is brought before it.

In our opinion the title suggested by the Examiner such as "automobile door handle or similar article" is as broad as appellant is entitled to. See Ex parte Guinzburg, C. D. 1925, p. 159.

Questions quite similar, if not identical with, the one at bar, have been frequently ruled upon in the Patent Office, many of which rul

ings are in direct conflict with others. No decision of any court has been cited to or found by us bearing directly upon this question.

It has often been argued that a design patent, under existing law, may consist of a picture, pattern, print, or design for the ornamentation of an article of manufacture, which may be shown on paper without regard to the particular article of manufacture it is to adorn, and be the subject matter of ownership, use, and consequent protection, irrespective of the kind of article of manufacture it is to ornament and irrespective of the configuration, shape, and appearance the article may have when so ornamented. This contention, carried to its logical conclusion, suggests that such a design. patentee is entitled to a patent upon the same without any regard to whether it really improves the appearance of the article to which applied or not, and that the invention is the design per se. In substance this is the gist of the argument of appellant in a well-prepared brief.

In view of a consideration of the context of the present law and its predecessors, and the history connected with design-patent legislation, this line of argument, when subjected to certain limitations and qualifications, is not without force.

The Solicitor for the Patent Office defends the action of the Board in the case at bar chiefly with the contention that the ruling is in accordance with the " uniform practice of the Patent Office for many years" which "is entitled to much weight being the construction adopted by a coordinate branch of the Government," and to illustrate the rulings of the Patent Office which, he says, require "that design patents must be for a single article of manufacture," cites Schraubstadter, 1904 C. D. 229, 110 O. G. 2015; Remington, 1905 C. D. 28, 114 Ó. G. 761; Litle, jr., 1910 C. D. 227, 160 O. G. 1272; Hopkins, jr., 1923 C. D. 105, 317 O. G. 238. We may dispose of this contention of the solicitor, at this point, by saying that in view of rulings in certain cases hereinafter referred to, no such uniform practice in the Patent Office in this respect is shown to have prevailed for a very long period of time. Certainly such rulings have not been sufficiently uniform for such a period of time as to justify this court in refusing to construe the language of the statute, when the question is squarely presented, and presented for the first time to any tribunal other than those of the Patent Office.

Congress in 1842, under the authority granted by Article I, section 8, of the Constitution, enacted the first design patent law (Stat. II, August 29, 1842, Chap. CCLXIII, 5 Stat. L. 543), section 3 of which law was as follows:

Any citizen

who by his

SEC. 3. * * own industry, genius, efforts, and expense, may have invented or produced any new and original [1] design for a manufacture, whether of metal or other material or materials, of any new and original [2] design for the printing of woolen, silk, cotton, or other fabrics, or any new and original [3] design for a bust, statue, or bas relief or composition in alto or basso relievo, or any new and original [4] impression or ornament, or to be placed on any article of manufacture, the same being formed in marble or other material, or any new and useful [5] pattern, or print, or picture, to be either worked into or worked on, or printed or painted or cast or otherwise fixed on, any article of manufacture, or any new and original [6] shape or configuration of any article of manufacture not known or used by others before his invention tion

*

* * to the Commissioner of Patents
may grant a patent therefor

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may make applicaand the Commissioner [Italics and numbers ours.]

The only enforcement provision that was then enacted is found in a subsequent section of the same act and does not purport to cover the same subject matter as does the enforcement provision now in force, which was enacted on February 4, 1887, chapter 105, 24 Statutes at Large 387, and is, in part as follows:

That hereafter, during the term of Letters Patent for a design, it shall be unlawful for any person other than the owner of said Letters Patent, without the license of such owner, to apply the design secured by such Letters Patent, or any colorable imitation thereof, to any article of manufacture * [Italics ours.]

By the act of 1861, chapter 88, 12 Statutes at Large 248, and the act of 1870, chapter 230, 16 Statutes at Large 209, section 3, supra, was slightly changed in wording and became section 4929 of the Revised Statutes of 1874, which section reads as follows:

SEC. 4929. Any person who, by his own industry, genius, efforts, and expense. has invented and produced any new and original [1] design for a manufacture. bust, statue, alto-relievo, or bas-relief; any new and original [2] design for the printing of woolen, silk, cotton, or other fabrics; any new and original [3] impression, ornament, patent, print, or picture to be printed, painted, cast, or otherwise placed on or worked into any article of manufacture; or any new, useful, and original [4] shape or configuration of any article of manufacture, [etc.]. [Italics and numbers ours.]

In 1902, Congress amended section 4929 Revised Statutes, supra, to read in part as follows:

Any person who has invented any new, original, and ornamental design for an article of manufacture [etc.]. [Italics ours.]

In Ex parte Fulda, 1913 C. D. 206, 194 O. G. 549, Commissioner Moore, having under consideration the preamble of a specification reading: "a new, original and ornamental design for an article of manufacture," reviewed the history of design patent legislation in a very interesting and instructive manner. After setting out the original section 4929 of the Revised Statutes, supra, and the quoted part of the amended section now under consideration, he said:

Congress did not, in amending the act in 1902, intend to omit as proper subjects for a design patent

"any new and original impression, ornament, patent, print, or picture to be printed, painted, cast, or otherwise placed on or worked into any article of manufacture." 1

As far as we are advised no one has ever expressly denied the correctness of this statement of law except as such denial may be implied from rulings in the Patent Office which can be justified only on the theory that the statement is incorrect. See Ex parte Guinzburg, 1925 C. D. 159, 341 O. G. 1049, which is relied upon by the Board of Appeals in this case.

The Commissioner in the Fulda case further said:

66

Former Commissioner Allen drafted the section of this statute as it now appears primarily for the purpose of substituting the word 'ornamental" in place of the word "useful" in the former statute. That it was not the intention in using the term "article of manufacture" in place of the specification of particular matters in the prior statute to omit any of them clearly appears from the following extract from a memorandum submitted by Commissioner Allen to the committees of Congress having the bill in charge:

1 See Ex parte Cady, 1916 C. D. 57, 232 O. G. 619, for a full discussion of this subject. See also Er parte Knothe, 1903 C. D. 42, 102 O. G. 1294.

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