pressed the view and has submitted affidavits in support thereof that these ridges were adopted for trade-mark purposes, and that their mechanical function is at most merely incidental and secondary. Applicant has urged that it may be possible, at least in some stockings, to knit in the ridges without having the threads crossed whereby the runs would be stopped so that the ridge would then not possess any mechanical function. Even if this were admitted, however, there is no contention that the threads in the samples furnished and the stockings in connection with which the ridges have been used were knit in any other manner than so that the runs would be stopped. The fact is noted by the applicant that other arrangements long prior to the appearance of the ridges adopted by the applicant have been employed by others to stop runs in stockings and that, broadly, there is no novelty in constructing stockings with such safeguards. The fact can not be overlooked, however, that when the ridges were first used by the applicant they were knit in during manufacture in accordance with the disclosures of the patents referred to, and when so knit in they functioned as integral parts of the stockings and possessed the mechanical advantages above outlined.

Upon the facts as here established or admitted it is believed trade-mark use can not be predicated. A trade-mark, under the statutes as construed by the adjudicated cases, can not be an integral part of the goods and function in connection with the latter. The Examiner of Interferences noted in support of his decision in the opposition proceedings and in which decision he denied the applicant's right to register the mark for the reasons already set forth, the holdings in the cases of In re American Circular Loom Company, 128 O. G. 2191, 28 App. D. C. 450, and Ex parte Oneida Community, Ltd., 198 O. G. 899, 41 App. D. C. 260. To these may be added the case of In re The Goodyear Tire & Rubber Company, 339 O. G. 764, 55 App. D. C. 400, concurred in by the U. S. Circuit Court of Appeals, Fourth Circuit, 370 O. G. 354, April 10, 1928.

To grant applicant the registration sought would be, since registration may be renewed any number of times, equivalent to granting applicant a perpetual patent upon a run-stopping ridge knit into a stocking.

It is urged by appellant's counsel that the color of its trade-mark is limited to the color of the hosiery, while in the Miller patent, supra, appellant is protected as against any color, and that anyone desiring to use the run-stop function of the Miller patent, supra, after its expiration, could do so by using a different color, but concedes that the change of threads would entail more labor. We know of no good reason why the public is not entitled to use any color it chooses at the expiration of the Miller patent.

The rejection of appellant's application upon the ground that the proposed trade-mark is an integral part of the goods and as such performs a function and is descriptive within the prohibition of the statute, is amply supported by numerous authorities which we will cite but not discuss. Daniel v. Electric Hose & Rubber Co., 231 Fed. 827, involved corrugations running longitudinally on a hose to prevent kinking; In re Oneida Community, 41 App. D. C. 260, 1914, C. D. 107, involved a circular or O-shaped film on the back of spoon bowls; Smith v. Krause, 160 F. 270, involved ribbons having woven therein the proposed trade-mark "Merrie Christmas"; Goodyear Tire & Rubber Co. v. Robertson, 25 F. (2d) 833, C. D. 225, involved diamond-shaped projections on the treads of Automobile tires. In each of the above cases registration was denied because the mark was an integral part of the merchandise.

In this court we have held In re Dennison Manufacturing Co., 17 C. C. P. A. (Patents) 987, 396 O. G. 350, 39 F. (2d) 720, that an urn-shaped figure forming a patch for a shipping tag could not be made the subject matter for a trade-mark and there said:

It is well settled that the configuration of an article having utility is not the subject of trade-mark protection. Adams v. Heisel (C. C.) 31 F. 379; Davis v. Davis (C. C.) 27 F. 490; Nims on Unfair Competition and Trade-Marks, § 195.

Appellant concedes the correctness of this doctrine as applied to articles, but apparently contends that it does not apply to a part of an article, even though such part performs a useful function. We see no distinction in principle If one may secure a valid trade-mark upon the shape or configuration of an essential part of an article, it would permit monopolies never intended to be protected by the common law relating to trade-marks, or by statutes governing their registration.

In the case at bar, appellant affixes nothing to the patch, and if the patch, which is conceded to have utility, be removed, there would be nothing left of the trade-mark.

The decision of the Commissioner of Patents is affirmed.

Affirmed.

[U. S. Court of Customs and Patent Appeals]

IN RE KAISLING

No. 2,518. Decided December 1, 1930

402 O. G. 265; 44 F. (2d) 863

1. PATENT OFFICE-RULES.

"It is fundamental, of course, that a rule of the Patent Office can add nothing to the rights provided in the statute. The rules are made for carrying out the law and may not be inconsistent therewith."

2. PATENTS APPLICATION-RENEWAL

CAN NOT BE FOR DIFFERENT INVENTION

FROM THAT OF ALLOWED CLAIMS. Where an application is allowed with certain claims, "if an applicant, in making application for a renewal, elects to alter the claims as they stood in the forfeited application and put them in a form of invention or discovery different from the form in which forfeited, he may do so, provided the newly proposed form was claimed or attempted to be claimed in the application as worded at the time of its allowance, such alteration not of course to result in a patent for any subject matter not included in the forfeited application."

APPEAL from the Patent Office. Affirmed.

Mr. G. A. Yanochowski and Mr. C. P. Soper for Kaisling.

Mr. T. A. Hostetler and Mr. Howard S. Miller for the Commissioner of Patents.

GARRETT, J.:

This case is a rather complicated one by reason of the multiplicity of actions relating to it which were had in the Patent Office, but it presents only a question, or questions, of law, and we are not immediately concerned with the patentability of the claims from a mechanical standpoint.

It does not seem to be essential to the understanding and decision of the case fully to detail the various steps that have been taken.

The applications have been prosecuted by Kaisling's (appellant's) assignee. From the brief it appears that disagreements between the

parties led to some of the procedure which brought about the complications.

The parent application was filed December 15, 1913. This application, as filed, carried three features of claimed invention, to wit, (a) a lock switch structure, (b) a lock per se, and (c) a system in which the lock switch was a useful element for dimming certain of the lights. The complete structure was apparently primarily for use on automobiles.

In 1915 the Examiner required a division of the application (which had been amended by inserting claims that finally became claims 1 and 2 of the instant controversy) so as to divide the claims covering the lighting switch arrangement (including a dimming feature) from the other claims.

In 1917 claims were filed for the purpose of interferences with a co-pending application of another party.

The required divisional applications were held in abeyance while the interference proceedings were pending, but on November 10, 1919, a divisional application was filed including some subject matter not involved in the interferences. This application eventually became the basis upon which the issue before us was formulated.

Final decision was not had in the interference proceedings until January 4, 1924. It was favorable to applicant herein, and, following it, the ex parte prosecution of the claims was proceeded with. It was appellant's insistence that one of his claims (No. 3 in the case now before us) stood allowed as a result of the decision in the interference case, but the Examiner required the division, as theretofore had been suggested, and the inclusion of that claim in the divisional application.

The parent application was several times amended, and, as amended, was finally allowed on December 13, 1924. The patent as No. 1,523,426, seems to have been formally taken out on January 20, 1925, and it included only claims for the switch.

In the meantime, the divisional application of November 10, 1919, had been so amended and proceeded with as that, on July 18, 1924, patent was ordered covering only the claims to the lock per se.

This latter patent did not issue, however, because the final fee was not paid within the time fixed by the statute.

On January 21, 1925 (the day following the actual taking out of the patent granted on the parent application), the assignee of Kaisling filed an application for the renewal of the patent allowed, but not taken out, under the divisional application.

In taking this action appellant proposed to proceed under sec. 4897, R. S., which, at that time (1925) provided that within two1 years from the allowance of a patent application, where there had been a failure to take the allowed patent out because of nonpayment of the final fee within six months from date of allowance, a person in interest might file application for renewal.

In this renewal application, however, appellant did not simply seek a renewal of the ordered, but unissued, patent on the lock per

1 The statute was amended in 1927 so as to limit the time for making renewal application to one year.

se. On the contrary, it was proposed, by an amendment submitted with the renewal application, virtually to cancel the lock claims as they had been allowed and substitute therefor the claims that are here at issue as Nos. 1, 2, and 3; these being duplicates of claims that had, on November 22, 1924, been cancelled from the parent case (as claims therein Nos. 24, 25, and 34, the latter being the claim won by applicant in the interference proceeding). In other words, as stated by the Examiner:

the petition for renewal *

was presented accompanied by an amendment directing the change of the statement of invention so as to cover the system, and directing the substitution for the lock claims, of claims for the system. (Italics ours.)

So, in the final analysis, the primary question presented is, whether applicant proceeding under section 4897, R. S., by a petition, purporting to be an application for renewal, may change the character of the proceedings so that he will virtually eliminate the patent as allowed, or secure it in connection with subject matter not claimed, or attempted to be claimed, in the application as allowed. In other words, is appellant's application such a renewal application as is contemplated and provided for in the statute?

Both the Examiner and the Board of Appeals held against appellant, and the question is before us on appeal from the decision of the latter.

At the time of filing the renewal petition (which included 13 claims), appellant accompanied it by a statement from which we quote:

The claims allowed in this application have been slightly amended and transferred to the parent application. They have been so changed as to make them switch structure claims. As to the claims submitted by this amendment, the first three of these claims are claims that have been transferred to this application from the parent application to maintain a line of division. The third claim is a claim from interference No. 41,977, in which interference priority was awarded to applicant. As to the other claims submitted by this amendment these are believed to be all allowable to applicant in view of the award of priority in said interference No. 41,977.

The Examiner held, in substance, that the petition could not be treated as a renewal application for the reason that it was not for the same invention, and the reasoning of the Board was in line with that of the Examiner.

It may be stated that there was agreement by the Examiner and the Board as to certain other phases of the controversy, but we regard the question of appellant's rights under his renewal petition as being of first importance, and hence do not complicate the matter by bringing these additional issues forward here.

The material portion of section 4897 reads:

Sec. 4897. Any person who has an interest in an invention or discovery, whether as inventor, discoverer, or assignee, for which a patent was ordered to issue upon the payment of the final fee, but who fails to make payment thereof within six months from the time at which it was passed and allowed, and notice thereof was sent to the applicant or his agent, shall have a right to nake an application for a patent for such invention or discovery the same as in the case of an original application.

Appellant insists that under the wording an applicant is not confined, in a renewal application, to the claimed invention allowed in the forfeited patent but that, on the contrary, he may "claim any invention or discovery the same as in the case of an original application," and in the course of his brief refers the court to Ex parte Barrett, 1891 C. D. 154; Karl Kiefer Mech. Co. v. Unionwerke, 218 Fed. 847; Ex parte Prouty, 1919 C. D. 62, and Bowers v. San Francisco Bridge Co., 69 Fed. 640. These several cases we have examined. In the Barrett case, supra, the Commssioner of Patents held that Barrett had the right to file a renewal application and to "present for examination certain new claims." The text of his opinion induces the belief that the question with which the Commissioner was there concerned was primarily the question of the oath to the petition involved. Rule 176 is quoted and certain comment made as to the oath, petition, etc., and then follows the sentence:

In all this I find no suggestion that an applicant may not treat his renewal application as he may his original application, and if he may, it is of course his right to present and have considered such claims as he thinks proper.

In the absence of specific information as to what the "certain new claims" proposed in the case were, we hardly think the general observation quoted may be accepted as governing in the instant case. It seems well to quote the opening statement of the Commissioner of Patents in the Prouty case, supra:

This is a petition that applicant be allowed to prosecute, in a renewal application, claims to a specific form of the invention other than the species covered by the claims originally allowed in the application that became forfeited. (Italics ours.)

The Commissioner then held that:

An applicant may ordinarily make a new election in a renewal application and prosecute claims to a species other than that originally elected provided of course that such species is fully disclosed in the original application. (Italics ours.)

The material portion of rule 175 reads:

*

When the patent has been withheld by reason of nonpayment of the final fee, any person may file a renewal of the application for the same (Italic ours.)

invention.

It will be borne in mind that the quoted portion of the rule is based upon that part of section 4897 R. S. which reads:

Any person

shall have a right to make an application for a patent for such invention or discovery the same as in the case of an original application. (Italic ours.)

The "such invention " means the invention " for which a patent was ordered to issue " referred to earlier in the section. See statute, supra.

[1] It is fundamental, of course, that a rule of the Patent Office can add nothing to the rights provided in the statute. The rules are made for carrying out the law and may not be inconsistent therewith. We think, therefore, that, in the Prouty case, supra, there was no purpose on the part of the Commissioner to construe the statute and the rule so as to permit renewal applications which would include subjects of invention different from those embraced in the application which had been forfeited. He did hold that claims to