two documentary films which were being shown in 1964. In addition, appellee's testimony establishes that door plaques or plastic signs showing the mark "GUIDING EYES" have been used continuously on appellee's administrative offices in Forest Hills, New York, since the middle 1950's. Appellee also took the testimony of several blind persons who have, at one time or another, used its services. These persons testified in effect that to them "GUIDING EYES," "SECOND SIGHT," and "Guide Dog Foundation for the Blind" are all terms by which appellee had been and was, at the time of the testimony, being identified. All were familiar with the mark "GUIDING EYES" because they had been made aware that this mark was embossed on the harnesses and used on the identification tags for their guide dogs. Throughout the entire period, the mark "GUIDING EYES" also was used on the identification cards supplied to blind persons using appellee's guide dogs. When Mrs. Stephens' testimony was taken in June 1964, she produced the same dog harness which had been given to her by appellee in 1955 with her guide dog "Dutchess." "Dutchess" had died about a year prior to her testimony (apparently sometime in 1963) but the harness which Mrs. Stephens produced and which had been in use until the death of "Dutchess" had the legend "Guiding Eyes, Forest Hills, N.Y." embossed on the handle. The board found that the appellee had presented a prima facie showing it was the first user of the mark "GUIDING EYES” and that the mark had been used continuously to identify its services. It found that appellee never had intended to abandon the mark although it had used "SECOND SIGHT" on its letterheads and other written material since 1956. The board particularly pointed out that no period of actual non-use by appellee had been proved. We have considered the facts of record in the light of the foregoing portion of the statutory definition of abandonment and agree with the board that an abandonment arising from appellee's alleged discontinuance of the mark "GUIDING EYES" has not been proved. The Trademark Act of 1946, as amended, also recognizes that "abandonment" may arise: (b) When any course of conduct of the registrant, including acts of omission as well as commission, causes the mark to lose its significance as an indication of origin. (15 USC 1127.) As the issue is here framed, appellee's conduct is relevant to that issue only as it bears on the question of its abandonment of the mark. The board found that appellee's use of "GUIDING EYES” over the years had been sufficient in nature to maintain this term as an identifying mark of the appellee. [2] The record as a whole does not show that appellee's "course of conduct" had caused the mark "to lose its significance as an indication of origin." This defect in the record is not cured by appellant's reliance on the equitable principles of laches, estoppel and acquiescence under 15 USC 1069. Under 15 USC 1127 it is necessary to establish that the conduct of appellee was such as to cause a loss in significance of its mark as an indication of origin. The present record fails to do so. Under these circumstances, we agree with the decision of the board that appellant failed to establish abandonment of the mark by appellee, and thus failed to discharge its burden of proving priority of its right to register the mark. For the foregoing reasons and to the extent indicated, the decision of the board is affirmed. 384 F.2d 1014; 155 USPQ 460 IN RE HOWARD A. FULTON, LAIRD I. KERR, AND CLAYTON DUANE OBRECHT (No. 7813) PATENTS 1. PATENTABILITY—INVENTION-IN GENERAL It may well be that applicants solved an actual problem, but it does not neccessarily follow that solution was unobvious. United States Court of Customs and Patent Appeals, November 2, [Affirmed.] 1967 Appeal from Patent Office, Serial No. 251,905 Watts & Fisher, B. D. Watts, Lowell L. Heinke for appellants. Joseph Schimmel (Jere Sears, of counsel) for the Commissioner of Patents. [Oral argument October 6, 1967 by Mr. Heinke and Mr. Sears] Before WORLEY, Chief Judge, and Judges RICH, SMITH, ALMOND, KIRKPATRICK* ALMOND, Judge, delivered the opinion of the court: This is an appeal from the decision of the Board of Appeals affirming the rejection on prior art of appellants' claims 16, 17, 18, 19 and 21 in their application 1 for relief valve with indicia-bearing lever. Appellants' invention resides broadly in the novel relationship of an indicia plate in combination with a relief valve. The indicia plate is mounted on a handle which is rotatable about the body of the relief valve in such a manner that the plate can be moved to a position where it is readily visible regardless of the position in which the valve is installed. The indicia plate may carry information pertaining to the ⚫ Senior District Judge, Eastern District of Pennsylvania, sitting by designation. 1 Serial No. 251,905, filed January 16, 1963. operating characteristics of the valve, including its inlet and outlet sizes, the pressure and temperature release settings of the valve, and the like. The reference relied on by the Board of Appeals is the patent to Banner No. 2,497,201, issued February 14, 1950, which relates to valves designed to effect fluid relief when predetermined limits of temperature and pressure are exceeded. Appellants admit that "[t]he claimed structure of the relief valve apart from the relation of the information indicia plate is old." The examiner found that "[t]aking claim 16 as illustrative, same reads verbatim on Banner except for the printed matter or indicia *** on the lever ***." The board observed that "[t]here is no controversy that the valve structure defined in the claims at bar is present in the Banner patent." We deem it unnecessary, therefore, to consider the details of appellants' valve or those of Banner. We do not consider it necessary to reproduce any of the appealed claims in extenso as we are concerned only with those limitations therein which relate to the indicia means. Claim 18 is illustrative: 18. A relief valve comprising: (f) an indicia plate carried by said other end of the elongated lever member, said plate extending beyond the sides of said lever member and being substantially wider than said lever member, said plate having a surface bearing indicia pertaining to the operating and condition responsive characteristics of the valve; and, (g) a swivel connection between at least two connected members whereby said indicia plate is rotatable about the longitudinal axis of the valve body to position its indicia bearing surface in any one of a plurality of easy viewing positions around the valve body. Appellants assert that they are unable to determine from the language employed by the examiner and the board whether the rejection of the appealed claims was predicated on 35 USC 101 or 35 USC 103. The examiner stated that all of the claims "stand rejected on the patent to Banner." Taking claim 16 as illustrative, he found "nothing inventive" in disposing a lever plate on the Banner lever, deeming it to be "entirely obvious to mount or place indicia wherever convenient." As to claim 17 which calls for a detachable plate, he deemed it to be drawn to subject matter which is obvious. He applied the same rationale to the remaining claims, concluding that "the differences over the art relied on are clearly obvious ***" In its affirmance the board stated: Placing information indicia on the downwardly extending arm of Banner's lever, whether directly thereon or by means of a plate attached thereto is not seen to involve anything more than an obvious convenient adaptation of the everyday practice of providing information where it is readily visible. We deem it obvious also to provide sufficient surface for the amount of information desired. * Upon reconsideration, the board stated that it did not consider the indicia means per se "but in their claimed relationship, which we did not find unobvious or patentable." In view of the foregoing, it seems clear that the rejection of the appealed claims was predicated on section 103, and properly so. This conclusion as to the basis of the rejection was shared by appellants. In their request for reconsideration, appellants stated: "It is the question of obviousness which is the basis for the Examiner's final rejection and the decision by the Board of Appeals." [1] It may well be, as appellants contend, that the location, accessibility and convenience of the indicia means poses a solution to an actual problem; yet it does not necessarily follow that the solution is unobvious. In re Gonser, 51 CCPA 1026, 327 F.2d 500, 140 USPQ 415. Our review of the record and consideration of the cited cases and the argument of counsel are not persuasive of reversible error in the decision of the Board of Appeals, which is accordingly affirmed. SMITH, J., Concurs in the result. PATENTS 385 F. 2d 453; 155 USPQ 521 1. PATENTABILITY—AGGREGATION OR COMBINATION-NEW OR BETTER RESULT PATENTABILITY—INVENTION-IN GENERAL Superior results do not necessarily preclude findings of obviousness, even when they are not precisely forecast by relevant art; statutory mandate is for evaluation of invention as a whole; however, a refusal to consider superior results is no more warranted by statute than a total preoccupation with them. 2. PATENTABILITY-TESTS OF-IN GENERAL "Obvious to try" is not a sufficiently discriminatory test of patentability; its application often would deny patent protection to inventions growing out of well-planned research which is guided into those areas in which success is deemed most likely; these are obvious areas to try, but resulting inventions are not necessarily obvious. 3. PATENTABILITY-CHANGE-MATERIAL Lack of explicit suggestion in prior art to make substitution of specific propylene in circuit breaker is not fatal to finding of obviousness; claims are rejected since art suggests the interchangeability of propylene with material hitherto used. 4. AFFIDAVITS-DISTINGUISHING FROM REFERENCES-EVIDENCE-EXPERT TESTI MONY Applicant's opinion on ultimated legal issue of obviousness of claimed invention is not evidence; while some weight ought to be given to a persuasively supported statement of one skilled in the art on what was not obvious to him, legitimate inferencees from art of record are too strong to be affected by weight to which instant affidavit is entitled.— United States Court of Customs and Patent Appeals, November 9, 1967 [Affirmed.] Appeal from Patent Office, Serial No. 174,777 Robert R. Lockwood (Harris C. Lockwood, of counsel) for appellant. Joseph Schimmel (S. Wm. Cochran, of counsel) for the Commissioner of Patents. [Oral argument October 5, 1967 by Mr. Robert R. Lockwood and Mr. Cochran] Before WORLEY, Chief Judge and Judges RICH, SMITH, ALMOND, KIRKPATRICK* RICH, Judge, delivered the opinion of the court: This appeal is from a decision of the Patent Office Board of Appeals1 affirming the final rejection of claims 1-8 in appellant's application serial No. 174,777, filed February 21, 1962, entitled "Circuit Interrupter Construction." No claim has been allowed. The invention is a circuit breaker in which an arc is formed when the circuit is interrupted and in which the arc-confining surfaces are made of fluorinated ethylene propylene (FEP). Except for the use of this material the claimed structure is old. Claim 1 is illustrative (emphasis ours): 1. An electric circuit interrupter comprising, in combination, means between which an arc is formed on interruption of the circuit, and a structure adapted to confine said are having its arc confining surface formed of fluorinated ethylene propylene. The other claims describe the structure in greater detail. The issue in this case is solely the obviousness of making the arc-confining surface of FEP. The examiner cited the following patents: Lindell Browne et al. Gordon 2,591, 950 2, 924, 690 3,057, 952 April 8, 1952 He also cited a sales bulletin of the DuPont Company, entitled "Teflon 100 FEP," which was received in the Patent Office on September 6, 1961. 3 The Lindell and Browne et al. patents show generally the structures of the claims. In the Lindell disclosure, however, the arc-confin Senior District Judge, Eastern District of Pennsylvania, sitting by designation. 1 Consisting of Friedman and Keely, Examiners-in-Chief, and Reynolds, Acting Examinerin-Chief, author of the opinion. Fluorinated ethylene propylene (FEP) is apparently marketed as TEFLON 100 or TEFLON 100 FEP. Polytetrafluoroethylene is marketed as TEFLON or TEFLON TFE. To avoid confusion FEP will be used for fluorinated ethylene propylene and TEFLON will be used only for polytetrafluoroethylene. 3 The same Lindell who is appellant in this case. |