Starting with the foregoing as resting in common knowledge, we reach the technical field in which the patentee claims he made his exploration and discovery and we thus credit him with discovering the percentage of water required in each constituent solution and the slow speed of their mixture as the prerequisites to throwing down the resultant in the most minute and flocculent particles. This clearly appears to be all that he did by way of inventing the chemical process which produced his new combination of matter. He claims. no more and proof would not go further. With that result in hand, all else in way of treatment is purely mechanical and readily suggestive to any one familiar with the subject.

The chemical process which the patentee thus described, and also its resultant product, each impresses me as but an advancement in degree. He claimed an improvement in acid arsenate of lead. That chemical compound in both the pulp and dry form was well known and widely in use, as he sets forth, for all purposes that were claimed for the patented combination. Admittedly, that in the pulp form could be used as efficaciously as complainant's as an insecticide, and that in the dry form was on the market and was also being used for that purpose. It was inferior in degree only to complainant's. The patentee took a step forward. As he says, it was only an improvement; and that only in degree. It seems the step was simple, an experiment that would occur to any one familiar with the art, when we consider the vast number of combined drugs and chemicals applied to useful and beneficial purposes. To monopolize each under the protection of the patent law would go far to thwart progress. The field of advancement not covered by the statute is larger than the one within its terms. It required only common sense to know that the smaller the poisonous particles were the longer they would remain in suspension for use in the spray, and would more completely cover the infected surface. And this was only raising efficiency in degree without the accomplishment of any new function. A chemical laboratory is on the same footing under the statute as any other workshop. Every-day knowledge of the chemist and not inventive genius prompted the successful experiment. In this respect the same rule which applies to patented machines applies to patented arts and products. (Tire Co. v. Lozier, C. C., 84 Fed. Rep., 659.)

On the following cases I am led to the conclusion that the patent is void and that the motion to dismiss is well taken: Glue Co. v. Upton, (97 U. S., 3; S. C., Fed. Cas. No. 9,607,) Smith v. Nichols, (2 O. G., 649; 21 Wall., 112;) Atlantic Works v. Brady, (C. D., 1883, 214; 23 O. G., 1330; 107 U. S., 192; 2 Sup. Ct., 225;) Risdon, etc., v. Medart, (C. D., 1895, 330; 71 O. G., 751; 158 U. S., 68; 15 Sup. Ct., 745).

The motion is sustained and the bill dismissed.

[U. S. District Court-Southern District of New York.]

FRIEDLEY-VOSHARDT Co. v. RELIANCE METAL SPINNING CO.

Decided July 26, 1916.

241 O. G., 913; 238 Fed. Rep., 800.

1. PATENTS-VALIDITY AND INFRINGEMENT-DESIGN FOR SHOWER-PAN. The Holton design patent, No. 47,244, for a design for a gas and electric fixture known as a shower-pan, discloses patentable invention; also Hell valid as against the claim that it was not the invention of the patentee and infringed.

2. SAME VALIDITY-DEFENSE OF PRIOR USE.

A defense of a prior use when introduced to invalidate an existing patent must be established by the most convincing evidence.

3. SAME-SAME-PRIOR SALE AND USE.

A patent is not invalidated by the public sale and use of the patented article at any time within two years before the application was filed, unless abandonment is shown.

IN EQUITY. Suit by the Friedley-Voshardt Company against the Reliance Metal Spinning Company. On final hearing. Decree for complainant.

Mr. Walter H. Pumphrey (Mr. Harry Lea Dodson of counsel) for the complainant.

Messrs. Munn & Munn (Mr. T. Hart Anderson of counsel) for the defendant.

HAND, Dis, J.:

(1) This is a suit to restrain the defendant from infringing Design Letters Patent No. 47,244 to Holton issued on the 20th day of April, 1915. There is no doubt that a design patent, like every other, requires invention, and, if the design in question for a gas and electric fixture known as a shower-pan is a mere aggregation of wellknown elements which could be assembled without ingenuity or artistic skill, it cannot be regarded as one showing invention. It is to be remembered that ornaments resulting from the varied juxtaposition of curves and angles, like the musical combinations resulting from the sequence of notes and chords, all contain certain intervalsornaments intervals of space, music intervals of sound-which are traditional and well known. It is difficult, if not impossible, after years of development, to imagine any article or ornament or any production of music of which this is not true. It is in the arrangement, or, to use the technical term of the patent law, the combination, of elements, and probably at this late day in that alone, that originality and esthetic skill may be evidenced. Mr. Ainsworth, the

designer of Caldwell & Co., well expressed this idea when he said in his testimony at the trial:

All motives are old. We have inherited them, and we combine them in such a way as to produce an artistic result and a new result; combining them in such a way as to make proper intervals in the spacing of ornaments and the proper emphasis of different ornaments, and to keep the play of light and shade so as to make on the whole a pleasing design, and its merit would depend a great deal on how thoughtful and how different it was from the stereotyped combinations:

Now coming to the design under consideration, it is very difficult to put in words a description which so differentiates it from the prior art as to convey any vivid impression to one reading this opinion. This is largely due to the inherent difficulty of describing visual impressions in words, which is, of course, heightened where the person attempting it is without technical training in drawing or art. The nearest resemblance to the shower-pan in suit is found in the so-called canopy No. 20,650 of Fensterer and Ruhe. This, from some points of view, is not dissimilar to the Holton design which the complainant sues to protect. When, however, the Holton shower-pan is looked at, not from a side view, but directly, as would be the case if it were suspended as a shower-pan, the difference between the two is very apparent and the superiority of the Holton design quite manifest. This is, I think, due to the concave portion of the shower-pan next to the outer beading. The ribbed or melon effect of the convex portion is common, and the beading is common; but the prior designs have in a general way a plane surface mounting toward the apex of the melon, while in the Holton design it is broken by the circular trough. Mr. Ainsworth has, I think, truly said:

In holding that up, we get a shadow inside here, and then a high light, and then we get shadows again. It gives more play of light and shadow, whereas on this canopy the light strikes it full on this side.

If the Fensterer and Ruhe canopy had been an attractive design for shower-pans, it would doubtless have been popular. As a matter of fact, however, the Holton pan has met with great commercial success and been sold by both complainant, defendant, and their customers in large numbers, while the Fensterer and Ruhe design has apparently never been put out as a shower-pan. This consideration is by no means controlling, but the commercial success of the Holton pan certainly tends to confirm my judgment that the design is novel and pleasing.

To quote from Mr. Ainsworth again:

* That is the function of a design, from an artistic line, pleasing both to the eye, the intellect, and if possible pleasing to the emotions, and to make a pleasant impression.

Chief Justice Fuller said, in the case of Smith v. Whitman Saddle Co., (C. D., 1893, 324; 63 O. G., 912; 148 U. S., 674; 13 Sup. Ct., 770:)

If * * * the selection and adaptation of an existing form is more than the exercise of the imitative faculty and the result is in effect a new creation, the design may be patentable.

Judge Grosscup remarked, in the case of Pelouze Scale Mfg. Co. v. American Cutlery Co., (102 Fed. Rep., at page 916; 43 C. C. A., 52:)

"Design," in the view of the patent law, is that characteristic of a physical substance which, by means of lines, images, configuration, and the like, taken as a whole, makes an impression, through the eye, upon the mind of the observer. The essence of a design resides, not in the elements individually, nor in their method of arrangement, but in the tout ensemble-in that indefinable whole that awakens some sensation in the observer's mind. * * * But whatever the impression, there is attached in the mind of the observer, to the object observed, a sense of uniqueness and character.

It is, however, principally urged that Holton was not the inventor of the shower-pan, because the Reliance Metal Spinning Company was given a rough sketch of a similar shower-pan not drawn to scale by some customer early in 1913, and that from this sketch a plaster model was made in March, 1913; whereas, Holton's drawings were not made until May of that year.

In reply to my questions at the trial, the defendant's witness Samuel Shapiro said that he could not testify where he got the design, or who gave it to him, so that the defendant does not now claim to have itself originated it, yet Shapiro, in his affidavit to oppose the preliminary injunction in this suit, said:

We have in our employ a designer who is constantly engaged in originating and contriving new and ornamental designs for the parts maufactured by us. And further deposed:

With regard to the particular design known as the Adams shower pan here at issue and shown in the cut attached thereto, that design was made by us as early as December, 1913.

(2) Furthermore, no shower-pans were put on the market by the defendant until December, 1913, while the complainant put out some of them in June and July of that year. These fixtures of the complainant may have contained the design before the beading was changed, but that is, I think, unimportant. I am not satisfied with the defendant's explanation of its delay from the spring of 1913 to December of that year in putting out this new shower-pan which has proved so successful commercially, and I am inclined to the belief that the dies were not made until a much later date than some of the defendant's testimony would indicate. The defendant produced a number of witnesses who swore to the making of the plaster pattern and dies in the spring of 1913, but I do not think this testimony will

bear a close scrutiny. It is to be borne in mind that a defense of a prior use, when introduced to invalidate an existing patent, must be established by the most convincing evidence. As the Supreme Court has said in the Barbed Wire Patent Case, (C. D., 1892, 299; 58 O. G., 1555; 143 U. S., 275; 12 Sup. Ct., 447:)

** Courts have not only imposed upon defendants the burden of proving such devices, but have required that the proof shall be clear, satisfactory, and beyond a reasonable doubt.

Now, the strongest pieces of evidence which the defendant has offered, to corroborate the testimony of Samuel Shapiro that a plaster cast was made from the rough pencil sketch of the shower-pan in March, 1913, and that a die was cast therefrom by the Fulton Foundry Company in April, 1913, were the testimony of the witness Baker, and the books of the foundry company. Baker picked out the die in court, and I think I saw on the plaster cast the indistinct number M 5779, which is the same number that appears in the books of the foundry company as applicable to a die-pattern received by it from the defendant on April 8, 1913. Baker testified that he sold a hydraulic press to the defendant on March 21, 1913, and was within a month thereafter consulted because the die he identified in court was not producing satisfactory results when the press was applied to it.

Bazeel, one of the defendant's witnesses, testified that he went back to work for the Reliance Metal Spinning Company "the last days of April," that he was "positively sure" of that date, and that he saw Cerveny make the plaster model. If this was true, it was not the plaster model sent to the foundry company on April 8, 1913. Moreover, Cerveny, who made the plaster die, said it was the second pattern he ever made for the Reliance Metal Spinning Company, and that it was a 16-inch pattern; whereas, he said the first one was an 18-inch Sheffield design. The books of the foundry company show that the plaster cast received April 8, 1913, was for an 18-inch die. It is difficult therefore to imagine that the die which Mr. Baker saw was for an Adam pan, and it was doubtless of the Sheffield design. The apparent number on the plaster cast for the Adam shower-pan was so indistinct and irregular that it seems hard to reconcile such markings with any businesslike system which might have been adopted by the foundry company to identify the casts from which its dies are made.

Furthermore, Samuel Shapiro, and other witnesses, testified that the die which Baker says was giving trouble was so faulty that it was necessary to cut out the complete center and recast the piece so that it would give a proper impression; but Cerveny, who made the plaster cast, testified that the only trouble with the die was a small hole which he stopped with copper rivets and zinc, and that it always worked satisfactorily thereafter.