DECISIONS

OF THE

COMMISSIONER OF PATENTS

FOR

THE YEAR 1917.

EX PARTE ANDREWS.

Decided October 24, 1916.

234 O. G., 373.

DESIGNS-APPLICABLE TO GROUP OF ARTICLES--WHEN ONE PATENT MAY COVER ALL.

Where a design is produced which is applicable to a group of articles, such as dishes, and the showing thereof as applied to one makes clear its mode and effect when applied to the others without further explanation, Held that the applicant may be permitted to cast his specification, claim, and drawing so as to cover the group.

ON PETITION.

DESIGN FOR A GLASS ARTICLE OF MANUFACTURE.

Mr. Joseph M. Nesbit for the applicant. CLAY, Assistant Commissioner:

The applicant petitions for contrary directions to the Examiner of Designs, who has held that the applicant's disclosure does not constitute sufficient subject-matter to support a design patent. Specifically it is contended that the drawing need not show in full lines the entire article to which the design is shown as applied; that the applicant may state that his design is usable on other articles, and that this case comes under the ruling in ex parte Fulda (C. D., 1913, 206; 194 O. G., 549) and should be governed accordingly.

To the extent that the case of ex parte Fulda holds it proper to patent a design without specifying any particular article to which it is applied that decision has been overruled, for the reasons given in ex parte Cady (C. D., 1916, 57; 232 O. G., 619), decided August 28, 1916. In this latter case it was also ruled that when an applicant presents a design shown as embodied in some particular article, but obviously applicable with the same effect to other articles, he will be allowed to cast his specification in such form as to show that the design is not alone for the particular article shown in the drawing.

The applicant's design is one adapted for a series of cut-glass articles differing very radically in their specific forms; but it is nevertheless a design which preserves intact all its characteristics, wherever applied. It is not possible to define in words the physiological effects made upon the eye by a design. It would be, in fact, an extremely difficult problem even to point out what it is in the design which creates the pleasing impression. It will suffice here to say that in this case, among the distinctive characteristics, are deeply-cut bars with a partially-opaque outer surface somewhat less, both in width and length, than the sloping side cuttings and arranged in orderly series. The novelty of this design is not in question.

Any one who is familiar with the work of designers in such arts will know that the designer starts out originally with the thought of creating such a design as will be applicable to a plurality of articles or a line of articles likely to be associated in use or to be presented simultaneously to a prospective customer. Having worked out a primal element of the design, the matter of changing the size or form of the element to suit the place it is to be put, multiplying the number of elements, etc., is a secondary part of the designing act and a part of the act of adapting the design to the form of the vessel. Some small final modification is doubtless necessary in adapting the design to each particular vessel; but the principle by which the design is recognized is the same thing on different dishes, and the principle by which the design is made to harmonize with other ornamental features of the dish or with the form of the dish itself are all inherent parts of the design.

In view of these facts it clearly would be absurd and a perversion of the law to limit the patent to the one particular dish or vessel or other article to which the design is shown applied. To say, for example, that one who had invented a design for a tea set could not obtain a patent on the design for a tea set, but must be limited to a design for that particular one of the dishes shown, would be entirely out of harmony with the spirit and terms of the law. Though the patent show the design as applied to a saucer, yet if it be a design the mode and effect of which when applied to a cup or sugar-bowl is obvious without further showing or explanation manifestly it would not be reasonable to require the applicant to take a series of patents to cover what is, in fact, one single invention-namely, a design for dishes broadly, not narrowly for a particular dish. The principal value of many of the most beautiful designs resides exactly in the adaptability of the design to several forms of articles.

In the expression of the law "design for an article of manufacture" it is not only necessary to note that the word "for" is used and not "of," but also to notice that the word "an" does not refer necessarily to a distinct and specific article, but may refer to a class

of articles. In some cases, as in Graff, Washbourne & Dunn v. Webster, (195 Fed. Rep., 522,) it has apparently not been even considered that the term "an article" means a complete article, since a section of a border of a dish was held patentable, notwithstanding the entire dish with that border was also patentable. It is obvious that a design for a carpet would necessarily be a design shown as applied to a fragment of the carpet. What is to be borne in mind is not the terms by which the thing is described, but the thing itself. In this present case the applicant's invention is not a bowl or a pitcher or a vase or a plate, but it is a design applied to any one of these things and to all of these things with the same effect-that is to say, the appearance of each of these vessels will be modified and rendered distinctive and more beautiful by reason of the presence of the design and in substantially the same way and with substantially the same effect in each vessel.

The applicant having canceled his original drawing, showing a fragment of an indefinite vessel with the design applied thereto, I am not now called upon to rule whether that was a proper drawing; but I am clear that if any drawing can be so made as to indicate on its face that the invention is not dependent on the specific form of the vessel this ought to be allowed. In the present instance the drawing is proper and sufficient. The specification also is without objection. The claim should be:

The ornamental design for a glass article substantially as shown and described.

There is no such thing as a broad claim or a narrow claim in a design patent, because the scope of the patent is and must inherently be controlled solely by the appearance of the applied design and the relation of that appearance to the appearances of like articles in the prior art.

The petition is granted, and the Examiner will be guided by the foregoing opinion.

JOLLIFFE V. WALDO v. VERMEER AND SCHORIK.

Decided December 18, 1916.

234 O. G., 671.

1. INTERFERENCE-ABANDONMENT OF APPLICATION BY WINNING PARTY WITHOUT MAKING INVENTION PUBLIC-JUDGMENT NOT A Bar.

Where the winning party in an interference without making the invention public permits his application to become abandoned, so that the public gets no benefit of it, he fails to complete the inventive act, and the judgment in the interference is not a bar to the grant of a patent for the invention to a losing party whose application has not become abandoned.

2. SAME-SAME-PRIOR KNOWLEDGE AS A BAR TO PATENT.

Prior knowledge, to invalidate a patent, must be prior knowledge of the actual thing-a physical embodiment of the invention-and must be public, (citing cases.)

ON PETITION. (Rehearing.)

TROLLEY-CATCHER.

Messrs. Seymour & Earle for Jolliffe.

Mr. George E. Waldo pro se.

Mr. John G. Elliott for Vermeer and Schorik.

EWING, Commissioner:

This is a petition to vacate a judgment awarding priority of invention to Vermeer and Schorik in the above interference. The issue of the interference reads as follows:

In an automatic trolley pole controller, the combination with a pivotal trolley pole, of a compressed air cylinder and a compressed air tank, whereby the pole is automatically moved into a clearance position, an emergency valve controlling the flowage of compressed air directly from the said tank to the said cylinder, a magnet controlled by the operating current, an armature controlled by the magnet for closing said valve, and a spring for returning the armature and opening the emergency valve when the current through the magnet is broken.

I have already handed down a preliminary memorandum, dated September 23, 1916, and an opinion denying the petition, dated November 2, 1916. It is upon this latter opinion that the petition for rehearing is predicated.

In interference No. 35,932, the junior party, Jolliffe, in his preliminary statement failed to overcome the filing date of either of the earlier parties, and after judgment against him he obtained Patent No. 1,089,414 for what remained to him. Waldo having failed to overcome the filing date of Vermeer and Schorik, a judgment of priority was rendered in their favor June 24, 1913, from which no appeal was taken. Waldo has, however, kept his application alive by appropriate action.

Vermeer and Schorik filed no preliminary statement in interference No. 35,932 and took no action after a letter of the Examiner dated July 26, 1913, so that their application has been abandoned for over two years.

As soon as he learned of the abandonment of their application Waldo on July 3, 1916, filed his petition praying that the judgment in favor of Vermeer and Schorik be set aside, that a judgment be entered awarding priority of invention of the subject-matter of the issue to him, and that the Primary Examiner be instructed to with