author: DICKINSON, District Judge.

text:
    UNITED STATES v. NINETY-FOUR DOZEN, MORE OR LESS, HALF-GALLON BOTTLES CAPON SPRINGS WATER.
    No. 22.
    District Court, E. D. Pennsylvania.
    Dec. 8, 1930.

      Howard Benton Lewis, Asst. U. S. Atty., of Philadelphia, Pa., and John B. O’Donnell, Asst. to Solicitor, Department of Agriculture, of Washington, D. C.
    Benjamin M. Golder, of Philadelphia, Pa., for defendant.
   DICKINSON, District Judge.

This record will be found to be in a more or less confused state. This is due to the fact that the libel proceedings are directed against a few bottles of no special value in themselves either commercially or with respect to the public interest. The issue in the case is what the condition of the contents of these few bottles was at the time of shipment in interstate commerce. If, for illustration, the wholesomeness of Capon Springs water is not questioned, the fact that a particular shipment of a few bottles of water might be questioned would be of little concern to any one, especially in view of the fact that, even if the shipment was open to complaint at the time it was made, the lapse of time would have a correcting effect, so that the shipment would be wholesome at the time of hearing .and indeed before the time the shipment would reach the market. The trial judge in consequence suggested that the issue be broadened so that the question of what we will call the wholesomeness of Capon Springs water as it came from the Springs and reached the market might be determined instead of the narrow issue of the wholesomeness of the particular shipment. This suggestion was tentatively accepted and the trial proceeded for a time upon this broader issue, but the tentative acceptance of the suggestion was afterwards withdrawn, and the issue confined to the narrow one indicated. The result of it has been that there • is in this record evidence bearing upon what we will call the general issue of the wholesomeness of Capon Springs water, with which issue we have in strictness nothing to do. There is an unavoidable embarrassment in dealing with a narrow issue, such as that indicated, because of the indirect consequences and effects of a finding.

The grown or manufactured product of a dealer in a food, for illustration, might be wholesome .and nutritious and yet a particular shipment have become unfit for food through what might be called accidental circumstances. The condemnation of the particular shipment might none the less have the effect of the inference drawn by consumers that the consumption of any of the product was harmful .and the whole trade of the dealer be thus ruined. There might be no justification for the inference, and yet every one knows that to condemn any part of what a dealer is shipping causes the inference to' be drawn by the consuming publie, the prospective purchasers of the product, that it is. all bad.

The Food and Drug Act (21 USCA § 1 et seq.) has a very beneficent purpose, and it is without doubt the duty of the courts to lend their aid to its efficient enforcement. At the same time it would be an unfortunate and unjustified consequence to have the value of the trade in a product wholly destroyed because a small shipment of that product had in some way become contaminated. We are all more or less finicky about the things we take into our stomachs. The slightest suspicion of careless or unsanitary methods in production or distribution might absolutely destroy the value of a large and important trade. The moral to be drawn from this is that a court should declare no condemnations without careful thought being given to the consequences which we have indicated. The wholesomeness of a food or drink cannot even be made the subject of a discussion without the possibility of consequences which would be deplored.

There is one part of the complaint made against this particular shipment which may, however, be freely discussed. The claimant here deals in a drinking or bottled water, which is also possibly bought with the thought that it has likewise some medicinal qualities. The water is known as Capon Springs water, which is taken from a spring in West Virginia. It is charged that the water as put upon the- market is misbranded, evidenced by the labels on the bottles in which the water is marketed.

Section 8 of the act (21 USCA §§ 9,10) defines the meaning of the term “misbranded.” The “article” is misbranded if “the package or label which shall bear any statement, design, or device regarding such article, or the ingredients or substances therein which shall be false or misleading in any particular.”

It is charged that Capon Springs water is marketed under a label which describes it to be “Healing Water,” thereby implying that the drinking of it will have curative and therapeutic results, when in fact the water is more accurately described as drinking water, having only the properties of what might be called ordinary spring water.

There is no meaner or more despicable fraud than that of persuading those afflicted with a disease to buy something on the promise that it will cure them or help them when .the hope aroused is wholly delusive .and the statements made fraudulently misleading. Any one would feel the call to aid in the suppression of frauds of this character. There is nothing in this case which would justify the finding that Capon Springs water is medicinal in the sense indicated. When one is speaking of a drinking water, it is difficult to draw the line between an effect which is merely beneficial and one which is medicinal. Any one may have a prejudice in favor of the water from some favorite well or spring and believe they are' benefited by drinking it. So believing, they would not be condemned for recommending it to others, nor do we think the commercial exploitation of it would come within the condemnation of this .act of Congress so long as the line of fraud was not crossed. One has only need to recur to the literature of his youth to recall the incident of the visit of Leather Stocking to the spring from which the famous Saratoga water is now taken, and to the tribute which is paid in “Westward Ho!” to tobacco. There is scarcely any locality in the country in which there is not a spring about the waters of which there are traditions more or less well authenticated that the waters of the spring were a favorite drink of the Indians. The languages of the different tribes of American Indians had this in common that they were figurative and abounded in metaphors. The names given to individuals ascribed to them high-sounding qualities. There is said to be such a tradition connected with the Capon Springs.. This water was so highly valued by the Indians that it was given the name Capon, which, in the language of the particular tribe which inhabited the surrounding country, is said to have had the meaning of healing or healing water. There is an .advertising value in such a tradition, the benefit of which the claimants have undoubtedly sought to get. For some reason, which is inscrutable, many people attach a value to Indian medical lore. Any one who has a nostrum, for which he desires to create .a commercial demand, can do so successfully by panoplying some one in red paint and feathers and proclaiming the nostrum to be a favorite medicine among the Indians. This may be done in such a way as that it is clearly a fraudulent imposition and denounced as an offense against this act of Congress. On the other hand, it may be taken in such a way as to negative the thought of a real fraud and be nothing more than an advertising device to call attention to the thing which is offered for sale.

We see nothing in the label in this case which would justify a finding that it was fraudulent. The form of the label is

“Capon Springs Water known to the Catauaba Indians as ‘Ca-Ca-Paon’ Healing Water.
“2 Quarts Net — Bottled at the Springs. (Then follows an analysis in type too small to be conveniently read.)
“Natural Mineral Spring Water Famous for Two Centuries. Capon Water Co. Capon Springs, W. Va.”

There is doubtless an advertising value in the stuttering orthography given to the words Catawba and Capon, but this label is as close an adherence to the truth as is customary in commercial labels, and speaks the truth as nearly as would be expected of any advertiser of a commercial product. We would not find as a fact in what measure of esteem the Capon Springs water was held by the Indians, but there is that in the record of this case which would support the statement that the word Ca-Ca-Paon means in the Indian dialect healing water. Whether it does or not we would not find from the evidence, but we do find that there is evidence that the word is said to have this meaning.

The count in the libel of misbranding is not sustained.

Some of the literature put out by the claimants may he characterized as not only florid, but is almost laughable in its over statements. Every one has heard, however, of extravagant claims made by the advocates of a liberal use of ordinary drinking water. This is epitomized in the slogan “flood your kidneys.” This has no reference to any particular drinking water, but applies to any water. All the extravagant claims made for drinking Capon Springs water are made for the liberal use of any drinking water. There is no reason to doubt that those who advocate the liberal use of drinking water honestly believe the practice to be beneficial. We are. not prepared to make any finding that it is not, and we are far from finding that all the benefits claimed will be conferred. The point we have in mind to make is that the act of Congress does not interdict any one from advocating the liberal use of drinking water nor from enforcing the advocacy of it by extravagant predictions of the benefits which will follow. If this can be done in the ease of water as water, we do not see how the claimants can be interdicted from saying the same thing about Capon Springs water.

The next count in the libel is based upon the sixth clause of section 7 of the act (21 USCA § 8). As before stated, this feature of the libel cannot even be discussed without consequences which, although unintended, might none the less be very harmful to the trade of the claimants. As before also stated, we are restricted in any findings which we may make to the few bottles of water which were seized.

We make the finding that this water at the time of the trial was free from the criticisms made of it and will continue to be free. We make this finding because the claimants have introduced evidence through the testimony of experts to this effect, which is uneontradieted, and also because the offer was made by the claimants to submit the water to analysis and miscroscopieal examination for the government. This offer was declined and the testimony itself objected to because the question is asserted to be not what the condition of the water now is, but what it was at the time of seizure, and it would seem to be an admitted truth that the water would clear itself after a comparatively short time. The claimants assert that, in order to assure the wholesomeness of the water, it was their practice to keep it in storage for such a length of time as would leave no doubt of its wholesomeness before it was put upon the market. Whether this practice was in all eases followed it would not clear the claimants of the charge of shipping unwholesome water, if it was at the time of shipment unwholesome, even if the unwholesomeness were afterwards removed. Congress evidently had in mind the injustice which might be done through a charge of unwholesomeness of a particular shipment by being extended in the public mind to a condemnation of the entire product. The regulations are also mindful of this. It is because of this provided that, before any proceedings of condemnation are instituted, the interested persons shall be notified and given the opportunity “to show cause why the matter should not be referred for a prosecution as a violation of the Federal Food and Drug Act.” The purpose of this procedure is manifest. It was, however, for reasons which, in the opinion of the officers of the Bureau justified the omission, not followed in the instant ease. We think this should have been done, and, because of the omission to do it, that this count of the libel cannot be sustained. The purpose of the regulation in consonance with the intent of Congress is that the reputation of a food product shall not be blasted by the institution of proceedings without a full opportunity afforded to the parties concerned to convince the Department, if they can, that such proceedings should not be instituted. If the product be one, the shipment, of which in interstate commerce, should be interdicted, proceedings may be instituted and the shipment stopped, but, if the condemnation of the product is due to something which may be corrected, and the product itself does not call for condemnation, the proceedings need not be instituted.

This leads to a comment, in the making of which we may be going beyond our judicial duty, but which nevertheless we feel impelled to make. The comment is that the difficulties in which the claimants find themselves are largely of their own making. Apparently they have failed to appreciate the gravity and importance of the duties whieh the officials of this Bureau are called upon to perform. Instead of recognizing that the .activities of the officials are not only justified but demanded of them in furtherance of the protection of the public health, the claimants seem to have resented the intervention of the officials as an unwarranted intrusion into the private business of the claimants. Realizing, as of course the claimants did, how much harm to their trade a charge of unwholesomeness against the Capon Springs water would have,, whether the charge was well founded or ill founded, they resented the acts of the officials as if this injury was intended. This attitude on their part was wholly unjustified..

The Department needs no vindication at the hands of this court, but we feel free to express our absolute confidence in the good faith of the action taken and that it was done solely in the performance of duty and for the protection of the publie health.

The resentment of the claimants against the intervention of the Department and the general attitude of the claimants was interpreted as meaning a defiance of the Department and a challenge to them “to do their worst.” Because of this, the authorities felt justified in proceeding without any preliminary hearing. This feeling is natural enough and excusable in itself, but so far forth from justifying any refusal or failure to give the claimants the preliminary hearing called for by the regulations should have induced a careful regard to all the rights of the claimants. The Department doubtless viewed the provision for a preliminary hearing as applying only to criminal prosecutions, but there is the same reason for extending it to proceedings in rem.

Another comment is, we think, likewise within our province to make. It is that many of the claims made of benefit from the drinking of Capon Springs water are so extravagant as to justify the characterization of being ridiculous. No trial judge is in a position to pit his judgment of the benefit to the seller of certain commercial practices against the judgment of commercial men. We venture, however, the statement that those who buy Capon Springs water or other spring water do so because they wish a water to drink which is what is called “pure” .and which is palatable. Very few, if any, users of any of the spring waters would be induced to buy them in the hope that they will prove to be the panacea which, in the literature put out by the claimant company, this water is claimed to be.

We are not prepared'to say that the tradition that this water was highly regarded by an extinct tribe of Indians in the far distant past may not have some real advertising value, and, as we have already observed, we think the claimants can avail themselves of the- statement of what some Indian, now dead for many generations, may have thought of the water from this particular spring, but extravagant claims to a panacea should be dropped.

A final comment is that the parties to this cause, as if upon the preliminary hearing provided by the regulations, should meet and reach a working agreement such as would assure to the authorities a compliance with the law and leave the claimants free to conduct their business undisturbed by any complaints from the Department. We see no difficulty in. reaching such a working agreement. The claimants are bound to comply with all the requirements of the law, and we know that all the authorities wish is assurance that there will be such compliance. What is called for is a get-together attitude.

The conclusion reached is that the libel should be dismissed, and a 'form of decree in accordance herewith may be submitted.

We make the following specific findings of fact and conclusions of law:

Findings of Fact.

1. The Capon Springs water is a natural water obtained from springs near Capon Springs, W. Va.

2. There is evidence, sufficient to justify the claimants in making reference to it of a. tradition in the neighborhood of the springs that the word “Capon” is a corruption of the word “Ca-Ca-Paon,” meaning, in the dialect of the Catawba Tribe of Indians, “Healing Water.” There is no evidence, however, that the word ever had this meaning in spite of the tradition to that effect.

3. No hearing in the nature of a rule to show cause called for by the regulations was given to the claimants, but, on the contrary, they were refused all information and opportunity to correct the information upon which the libelant had based its libel.

Conclusions of Law.

1. The label used in this case by the claimants is not a misbranding within the meaning of the act of Congress on the subject.

2. The count in the libel based upon clause 6, section 7, of the act of Congress, is dismissed because of the failure to grant the claimants the preliminary hearing allowed by the regulations.

3. The libel should be dismissed.


source: Caselaw Access Project

author: DEAVER, District Judge.

license: Public Domain

text:
    SOVEREIGN CAMP, W. O. W., v. McKINNON et al.
    District Court, M. D. Georgia, Americus Division.
    March 19, 1931.
    J. R. Lunsford, of Reynolds, Ga., for respondent B. H. McKinnon.
    H. O. Jones, of Americus, Ga., for respondents Artie Lee Hallman and others.
   DEAVER, District Judge.

Findings of Fact.

I. The Sovereign Camp of the Woodmen of the World issued to Benjamin F. Goss its certificate No. R. W. — 849304—L for $1,000, in which his daughter, Mrs. Katie McKinnon, was designated beneficiary.

2. The insured and the beneficiary were killed on or about November 29, 1929’, when the automobile in which they were riding was struck by a railroad train.

3. Surviving Mrs. Katie McKinnon, the' benefieiary, were her husband, B. H. Mc-Kinnon, one child about 8 years old, who* died the day after its mother died, and a child, Billy McKinnon, 4 years old in August, 1930, who is now living.

4. B. H. McKinnon is the duly constituted administrator of the estate of Mrs. Katie McKinnon, deceased, the benefieiary in the policy, and the duly constituted guardian of the minor child, Billy McKinnon.

5. Benjamin F. Goss, the insured, left no surviving wife.

6. Artie Lee Hallman, Lillie Autrey, Bennie L. Goss, Fanny M. Christian, Alton W. Goss, and Elma P. Lowry are the surviving children of Benjamin F. Goss, the insured.

7. Section 55 (b) of the constitution, laws, and by-laws of the association is as follows:

“In the event of the death of all the beneficiaries designated in the certificate before the death of the member, if no new designation has been made, the benefits shall be paid to the surviving wife and surviving children and adopted children of the member, share and share alike; provided, that such surviving wife shall not be entitled to any benefits if she shall have been divorced; provided further, that if there be no surviving wife, the surviving children and adopted children, if any, shall be entitled to all of such benefits, and if there be no surviving children or adopted children, then the surviving wife, if any, shall be entitled to the benefit; but if there be no surviving. wife, children or adopted children, such benefit shall be paid to the next living relation of the member, in the following order: Parents or surviving parent, grandchildren, brothers and sisters, other blood relations, father-in-law and mother-in-law, son-in-law and daughter-in-law, brother-in-law and sister-in-law, step-father and step-mother, step-children, step-brother and step-sister, and persons dependent upon the member; and blood relatives of the half blood shall share equally with those of the full blood.”

Section 55 (d) is as follows:

“If there be no person surviving the member who is a legal beneficiary as defined in section 3 hereof, or if proof of claim is not completed by a qualified beneficiary within two years from the death of a member, then the said benefits shall be held by the Association for the use and benefit of any home, hospital or sanatorium maintained and operated by the Association.”

8. Benjamin F. Goss, the insured, and Mrs. Katie McKinnon, the beneficiary, perished in a common disaster and actual survivorship is unaseertainable.

(The question of fact whether Mrs. Katie McKinnon paid the premiums for any period after her designation as beneficiary is not determined; that fact being considered immaterial.)

Conclusions of Law.

1. The administrator has the burden of showing that the beneficiary survived the insured. There being no proof of actual survivorship and no presumption of survivor-ship, the administrator has failed to carry the burden. Therefore, under the facts, the proceeds of the poliey go to the surviving children of the insured to the exclusion of the administrator and to the exclusion of the beneficiary’s minor child, who was the grandchild of the insured.

2. Even if Mrs. McKinnon paid the premiums after she was designated beneficiary, her administrator would not be entitled to reimbursement out of the proceeds of the poliey.

Opinion.

The constitution and by-laws became a part of the insurance contract. Section 55 (b) provides that, “in the event of the death of all the beneficiaries designated in the certificate before the death of the member,” the proceeds of the poliey shall go to the surviving children of the member. The language quoted is in effect the same as “if the member'^ survives the beneficiary.” In other words, the contract provides that, if the beneficiary survives the member, she takes, and, if the member survives the beneficiary, the surviving children of the member take. There is no specific provision covering the contingency of inability to ascertain survivor-ship. It becomes necessary, therefore, to determine, if possible, from the contract, the intention of the parties in the event of such a contingency.

It seems reasonable to - say that the insured had in mind and so contracted to provide first for the beneficiary if, upon the accrual of the claim, she should be alive and able to take the benefit, and then to provide for his surviving children, if she should not be alive and able to take. If such was the intention, then it is immaterial that the contract contained in substance the words, “if the member should survive the beneficiary” instead of the words “if the beneficiary should not survive the member.” Young Women’s Christian Home v. French, 187 U. S. 401, 23 S. Ct. 184, 47 L. Ed. 233.

In the case of Cedergren v. Massachusetts Bonding & Ins. Co. (C. C. A.) 292 F. 5, the policy was on the life of Emma Peterson, payable to Mangus Peterson, and provided that, “in ease of the prior death” of Mangus Peterson, the company should not be liable. They both perished in a common disaster. The burden was held by the court to be on the administrator of Mangus Peterson to show that he survived Emma Peterson. See, also, Joyce on Insurance, vol. 2, p. 1824, § 832.

Moreover, section 55 (d) of the constitution and by-laws provides that, if no legal beneficiary survives the member, the proceeds shall be held by the association for the use of any home, hospital, or sanatarium operated by the association. That provision shows an intention that the beneficiary, to be able to take, must survive the insured.

Under section 55 (b), if the beneficiary does not take and there is no surviving wife, the benefits go to the surviving children of the member. The beneficiary in this ease was a child, but not a surviving child. The minor child of the beneficiary does not take, because under that section grandchildren .of the member take only if there be no surviving wife or surviving children or surviving parent.

The administrator is not entitled to reimbursement for premiums even if the beneficiary paid them under an agreement that she should be named as beneficiary. The facts in this ease are different from those in the ease of Royal Arcanum v. Riley, 143 Ga. 75, 84 S. E. 428, cited by counsel, and similar cases. In that ease there was a contract between the member and the beneficiary under which the beneficiary was to be named in consideration of his paying the dues and assessments. There was an attempt to change the beneficiary without his knowledge or consent. The contract was performed by the beneficiary, and the suit was not to recover money paid out, but to retain in equity his status as beneficiary and to receive benefits under the certificate. In this ease, if the beneficiary paid premiums in consideration of being named beneficiary, then the contract was performed on both sides. She was named as beneficiary, and there was no attempt to change the beneficiary. She received what she contracted for. She bought and paid for her status as beneficiary with all the rights which might accrue to such beneficiary under the certificate. She paid not for the right to take the benefits in all events, but only for the right to take such benefits as the certificate provided for the beneficiary. She contracted for the opportunity to take the benefits if she survived the member. The incidental fact that she did not survive does not give her administrator any legal or equitable right to receive the proceeds of the insurance or to be reimbursed for premiums.

A decree will be made accordingly.


author: SCHOONMAKER, District Judge.

text:
    In re MORGAN.
    No. 15736.
    District Court, W. D. Pennsylvania.
    Nov. 14, 1930.
    Bryan & Evans and Miles B. Kitts, all of Erie, Pa., for bankrupt.
    Gunnison, Fish, Gifford & Chapin, of Erie, Pa., for execution-creditor.
   SCHOONMAKER, District Judge.

A voluntary petition in bankruptcy was filed in this case on the 11th day of August, 19301, and Morgan was adjudged a voluntary bankrupt the same date.

On August 21, 1930, Frank A. Rice, a judgment creditor' of Morgan, moved to set aside the adjudication, basing the motion on the allegation, first, that the voluntary petition on the date filed did not set forth the true and correct status of the solvency of Jesse Clarence Morgan, for the reason that, after the petition was verified by him, he made and executed a certain agreement securing an extension from all of his creditors, and that certain property scheduled at that time had at the filing of the petition been sold: second, that, at the time of the filing of the petition in bankruptcy, Morgan was absent from the district, and his whereabouts unknown, and that this court was therefore without jurisdiction.

This petition was referred, to Ritchie T. Marsh as special master to take testimony and report thereon to the court with his recommendation for further action. The report of the special master was filed September 17, finding, among other things, that the bankrupt was domiciled and. had h'is principal plaee of business and residence in Girard township, Erie county, Pa., for the greater portion of six months immediately prior to the filing of his petition, and that no fraud in filing this petition has been alleged or proved. The master thereupon recommends that the motion to vacate the adjudication be denied.

The creditor, Frank A. Rice, excepts to the report of the referee, and the case was heard on exceptions to that report.

Having fully considered the report of the master and the exceptions filed, we conclude that the exceptions are not well taken and must be dismissed.

We are of the opinion that Frank A. Rice, a creditor, has no standing to maintain his aetion to set aside the adjudication. The courts have held that a creditor has no right to oppose an adjudication in bankruptcy except such as expressly given him by statute. There is no statutory provision giving to creditors the right to contest a voluntary petition in bankruptcy. A creditor therefore cannot maintain a petition to vacate an adjudication in such case after it is made. In re Ives (C. C. A.) 113 F. 911; In re Jehu (D. C.) 94 F. 638; In re Ann Arbor Machine Corp. (C. C. A.) 274 F. 24; In re United Grocery Co. (D. C.) 2391 F. 1016; In re Tully (D. C.) 156 F. 634; In re Carleton (D. C.) 115 F. 246.

It appears clearly by the evidence before the master that he was fully justified in finding that the bankrupt was domiciled and had his principal plaee of business in Girard township for the greater portion of six months immediately prior to the filing of this petition. The fact that he may have absconded on the 6th day of July, 1930, would not change that situation, for he could not in the meantime, prior to the date of the filing ” of the petition in bankruptcy, have acquired - a domicile in another district. There has been no fraud alleged by the petitioner in the matter of the filing of this petition.

The petition had been executed for some time; it was left with, an attorney; and, although a credit-extension agreement was executed by some creditors, it was not executed either by Morgan or his wife; and, after his departure, his wife went to Attorney Bryan and took away the petition and schedules which had been executed by Morgan, and filed them through Attorney Kitts. There was conversation between Morgan and his wife to the effect that he did not care what became of the petitions that were in the hands of Attorney Bryan. Thereafter he went away and his wife secured and filed the petitions.

We therefore hold that the creditor is without right of statute to intervene and move to-vacate; that this court has jurisdiction to receive and adjudge Morgan a bankrupt; that there has been no fraud alleged or proved in the matter of the filing óf the petition in bankruptcy. Exceptions to the master’s report will be overruled and the report confirmed.


author: LENROOT, Associate Judge.

text:
    In re HERMANS.
    Patent Appeal No. 2677.
    Court of Customs and Patent Appeals.
    April 15, 1931.
    Chas. H. Andros, of Albany, N. Y., for appellant.
    T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   LENROOT, Associate Judge.

This is an appeal from a decision of the Board of Appeals of the United States Patent Office affirming the decision of the Examiner, rejecting claims 1 to 10, inclusive, and 12,13,14, 20, and 21 of appellant’s application, for lack of invention over the prior art.

Claims 1, 3, 8, and 20 are illustrative of the claims in issue, and read as follows:

“1. In a device of the class described, in combination, a casing adapted to contain an explosive, releasable means adapted to cause an explosion thereof, releasing means separate from said exploding means adapted to release the same and permit said means to cause said explosion, said releasing means being actuated by water pressure, and means for controlling the action of said water pressure dependent upon the depth and time of immersion.”
“3. In a device of the class described, in combination, a shell adapted to contain an explosive and a detonator therefor, releasable means for firing said detonator, actuating mechanism for releasing said firing means including means normally retaining said firing means under tension adapted to be actuated by the flow of water dependent upon the time and depth of immersion, and a valve for controlling the water for actuating said means, said1 valve being adjustable by the operator to vary the time of explosion dependent upon the depth of immersion.”
“8. In a device for use as a mine and adapted to function upon mere immersion in water, a easing, an explosive and a detonator therefor, means for exploding the detonator, and means carried by the device for releasing the exploding means; the operation of said releasing means -being controllable depending upon the depth or time of immersion.”
“20. The method of combating submarine vessels which comprises launching from a surface vessel an explosive charge without substantial initial velocity, and thereafter exploding the same under water by hydrostatic pressure.”

The references are: Graydon, 356067, January 11, 1887; Lynch et al., 678367, July 16, 1901; Lynch et ah, 682728, September 17,1901; Unge, 806026, November 26, 1905; Niehoff, 820888, May 15, 1906; Halloek, 1183375, May 16, 1916; Scoville, 1203058, October 31,19Í6; Des Rosiers, 1207511, December 5, 1916.

Appellant’s alleged invention is a depth bomb and method of combating submarines. It comprises a container which is divided into two chambers, one of which carries the explosive and the other of which is normally empty, but adapted to fill with water, and the movement of this element releases a pre-energized firing pin to detonate the explosive. The depth or time at which the detonation occurs is controlled by means of a valve regulating the rate of inflow of water.

All of the questions involved in this appeal are questions of fact, and, as the tri.bunals of the Patent Office concurred in their determinations, they will be accepted by us, unless manifestly wrong. In re Demurest, 38 P.(2d) 895, 17 C. C. P. A. 904.

Claims 8, 20, and 21 were held by the Board of Appeals to be anticipated by any one of several named references. All of the other claims were rejected upon a combination of references, some of which were held to be applicable without modification, while others, it was held, would require modification involving only mechanical skill. It was also held that there was no invention in combining the several elements shown by the references, as appellant has done.

Appellant earnestly insists that what he did was not obvious in view of the references, but did, in fact, involve invention. In support of this contention he relied very largely upon a publication by the Navy Department, entitled “Navy Ordnance Activities, World War, 1917-1918,” published in 1920, and he placed before the Patent Office tribunals extracts from such publication which are found in the record. Said extracts describe a depth bomb devised in 1917 by the Bureau of Ordnance, in which a float became detached from the charge proper upon striking the water, and remained on the surface while the charge sank, and, in sinking, paid out rope attached to the buoy, which rope eventually fired the charge.

In his brief in this court, referring to said publication, appellant states:

“This publication is an authoritative and interesting commentary upon the general state of the art at the time of applicant’s invention. It describes in considerable detail the problem with which the allied nations were confronted, the solutions which were attempted and discarded before applicant’s solution was finally adopted, and it refutes any‘possible contention on the part of the Office that applicant’s solution could possibly have been the ‘obvious thing’ to do. * * * »

We have examined the publication thus referred to, and, immediately following the-extracts quoted therefrom in the record, we find a statement that at the entrance of the United States into the war the Navy Department developed a new type of depth bomb operated by hydrostatic pressure. We quote from said publication, pages 99 and 100, as follows:

“Meanwhile, however, the Naval Torpedo Station at Newport had developed a type of hydrostatically operated depth charge, which appeared at least the equal of even the latest British design. This firing mechanism was mainly the work of the Bureau’s engineer of mines and explosives, Mr. C. T. Minkler. * . * *
“Manufacture in quantity of the American depth charge of the Newport design, now known as Mark II, was at once commenced, under the direction of Commander S. P. Fullinwider, and the issue to the service began in the fall of 1917. The first contract for 10,000 of these Marh II depth charges was placed in July, 1917. Later, modifications of the Mark II depth charge were made and contracts for 20,000 more were issued in the spring of 1918. In December, 1917, the bureau placed a contract for 15,000' British type depth charges for the British Government. * * * (Italics ours.)
“The American and British depth charges differ in several main particulars. Ours fires .by means of hydrostatic pressure, while the British utilize the seepage principle also. * * *
“The depth charge consists of a cylindrical metal ease, approximately 18 inches in diameter and 28 inches long for the 300-pound depth charge, containing the explosive and firing mechanism, or pistol, as it is called. By means of a dial at one end of the case, the depth charge may be set to explode at one of several depths from 50 to 200 feet. When the depth charge reaches the depth at which it is set to explode, the pistol is actuated by the hydrostatic pressure at that depth and explodes the charge.”

It thus appears that, instead of discarding all other solutions “before applicant’s solution was finally adopted,” as claimed by appellant, the Navy Department had perfected in 1917 a successful depth bomb operated by hydrostatic pressure, while appellant did not file his application until January 24, 1918, and, according to a statement to his counsel before the Patent Office, offered his device to the Navy in the spring of 1918.

Therefore said publication is not helpful to appellant, and does not indicate that he made any contribution to the solution of the then very pressing problem before our government.

This, of course, does not negative invention upon the part of appellant in his particular device, and is not cited as an anticipation thereof, but it does negative appellant’s contention, in so far as it is based on said publication, that his solution was not obvious because the Navy Department was unable to produce a successful depth bomb until appellant laid before the Navy officials his alleged invention; the fact being, according to said publication, that the broad idea of appellant’s device was successfully put into operation in 1917.

We are not convinced that the Board of Appeals was manifestly wrong in its decision, and it is affirmed.

Affirmed.


author: GARRETT, Associate Judge.

text:
    DORER v. MOODY.
    Patent Appeal No. 2665.
    Court of Customs and Patent Appeals.
    April 15, 1931.
    Cleon J. Sawyer, of New York City, for appellant.
    Frank A. Bower, of New York City (Edward A. Hathaway, of New York City, of counsel), for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   GARRETT, Associate Judge.

An interference was declared by the Acting Examiner between patent, No. 1,586,978, granted to Dorer, June 1, 1926, upon an application filed February 3, 1921, and the application (which appears to be a divisional application of a parent case, the latter of which ripened into patent No. 1,502,865, July 29, 1924), filed June 15, 1923, but relating back to the parent application filed August 21,1920. By virtue of this latter date Moody became the senior party.

The counts of this interference are two in number as follows:

“1. In combination with a casing having suction and discharge means, a rotary impeller delivering fluid to the discharge, and means in the suction imparting rotational and axial velocity to the fluid before entering the impeller and separated therefrom by a conversion chamber.
“2. In combination with a casing having suction and discharge means, a double impeller connected at each side with said suction, and means in the suction at each side of said impeller and separated therefrom by conversion chambers for imparting rotational and axial velocity to the fluid before entering the impeller.”

Dorer moved to dissolve the interference on the ground that Moody was not entitled to make the counts.

Moody moved to amend b.y adding certain additional claims from the Dorer patent as new counts.

The Law Examiner denied both motions.

Upon the hearing before the Examiner of Interfereneés, Dorer raised certain points, to wit: (a) Moody’s lack of right to make the counts; (b) that Moody could take no benefit from his application of August 21, 1920; (e) that Moody was estopped by his long delay in presenting claims corresponding to the counts in issue; and (d) that there should be a recommendation of dissolution under Patent Office rule 126, because Moody was precluded by.his prior patents, 1,321,538 and 1,460,428, from obtaining patent on the counts at issue.

• The Examiner of Interferences declined to entertain the matter embraced in contention (d), holding that the points thereof might have been presented as fully “before the law examiner as they are presented here,” but stating that it was not intended to give any intimation that his views upon the matter differed from the views of the Law Examiner. Also the Examiner of Interferences held that rule 130 prohibited him from entertaining points (a) and (b). He, therefore, considered and passed only upon the question of estoppel, holding that Moody was not estopped, and awarding him priority.

Upon appeal to the Board of Appeals of the Patent Office, the several points above mentioned were presented to that tribunal and there adjudicated, the decision of the Examiner of Interferences awarding priority to Moody being affirmed.

The ease was then appealed to this court and errors embracing appellant’s foregoing contention assigned.

We shall deal with these assignments of error somewhat in inverse order.

As for the subject-matter embraced in (d), supra, the Board said: “These are matters for ex parte consideration. They furnish no ground for awarding priority in favor of Dorer and under the well established practice appellant is not entitled to a consideration thereof on an appeal from a decision on priority.” We find no error in this.

While appellant’s fourth assignment of error, apparently, relates to the question of estoppel embraced in point (c), supra, it does not use the word “estopped” and is not very specific in respect thereto. The subject is not discussed in the brief, nor do we recall any emphasis of it in the oral argument.

The authorities cited in the decisions of the Examiner of Interferences and of the Board of Appeals, Harbridge v. Perrin, 54 App. D. C. 106, 295 F. 927, 321 O. G. 705, 1924 C. D. 237; and Leonard v. Everett, 52 App. D. C. 90, 281 F. 594 (1922) 304 O. G. 232, sustain their holdings upon this issue.

This leaves to be considered only the question of whether Moody is entitled to make the claims embraced in the two counts. This question having been decided in the affirmative by both tribunals of the Patent Office as a result of the examinations there had by the experts, it must be clearly shown that their decision was wrong in order to justify this court in reversing their actions.

Appellant’s brief argues this issue under two heads: (1) That Moody’s application does not disclose a conversion chamber within the meaning of the Dorer patent, and (2) that Moody is not entitled to the date of his 1920 application, now patent 1,502,865, because, as we understand it, appellant insists that it does not disclose helically inclined stay vanes.

The invention at issue relates to rotary hydraulic pumps, the general object being to control the flow or force of the water in such a manner as that it will have a rotational and axial velocity before entering the impeller which will cause the machinery operated by it to function at high speed.

Both parties rely upon their filing dates, and appellant insists that, since the counts were claims of the Dorer patent, they must be given the meaning to which the Dorer pat-ent is limited, and that they must have beep disclosed with this meaning in Moody’s parent application of August 21, 1920, and not alone in his later divisional application, in order to give Moody priority, because the divisional date was later than appellant’s filing date.

Both parties show certain chambers which separate the - impellers from the “means in the suction imparting rotational and axial velocity to the fluid before entering the impeller.” Dorer refers'to these as “conversion chambers,” and, in his specifications, describes them as being “for transforming the energy of the fluid into rotational velocity in the same direction of rotation as the impeller,” and insists this meaning must be given to the “conversion chambers” of the counts.

Moody does not refer to his chambers as “conversion” chambers, but says of them in the specification that the water “passing through the vane free chambers 21 and 22 is delivered to the impellers 13 and 14 in the form of solid whirling streams.”

The contention of appellant is that by reason of the shape of Moody’s chambers, as disclosed by his drawings, the outlet points being somewhat expanded and not contracted, as is claimed for Dorer’s chambers, the impeller of Moody does not receive the liquid at an increased velocity as does the impeller of Dorer.

It will be observed that the counts do not in themselves call for increased . velocity. They speak only of “imparting rotational and axial velocity.” The word “conversion” is surely broad enough, as was said by the Board, “to cover the chambers of the respective parties even though they have an effect on the stream of water passing therethrough that differs somewhat in kind or degree.”

Even if we give to them the construction contended for by appellant, that is, that under the Dorer specifications the chambers must be so shaped as to bring about increased velocity, then it must be said that, accepting the drawings as accurately representing the dimensions and conformation of the chambers of the respective parties, we are unable to detect therein a sufficient distinction between the respective devices to cause us to feel justified in overruling, upon this ground, the conclusion of the tribunals of the Patent Office.

The court was favored by counsel for the parties with enlarged figures of the drawings, different features thereof being shown in different colors. This greatly aided in our efforts to study them which we have endeavored carefully to do.

Upon the issue relating to the “stay vanes” the decision of the Board says:

“Moody’s application in interference describes the guide vanes 19 and 20 as ‘helically inclined.’ Moody’s patent No. 1,502,-865 states (page 2, line 42) that the stay vanes 32 conform to the flow lines and are intended solely for mechanical support. While Moody does not specifically make this statement of his stay vanes 23, under discussion, it is reasonable to suppose that this statement is also applicable thereto. It is unreasonable to assume that Moody would so construct his stay vanes as to take out the whirling motion of the water, the very motion for which he provides a volute casing.
“This question was passed upon by the law examiner in his decision on the motion to dissolve and-by the examiner of interferences in his decision on the motion of Dorer to shift the burden of proof. We find no error in their decision that Moody is entitled to the date, August 21,1920, of filing of the application of his patent No. 1,502,865, for the invention in issue.”

The reasoning of the Board in reaching its conclusion upon this point appears to us to be not fallacious, but sound.

Moody employed a volute for the specific purpose of imparting a whirl or rotation to the fluid. It surely would not accord with sound common sense to assume that, having provided this means for a specific purpose, he then defeated the purpose by employing other means inconsistent with the first.

We are not convinced that appellant’s assignments of error are well taken.

The decision of the Board is affirmed.

Affirmed.


author: HATFIELD, Associate Judge.

text:
    In re ROWLEY.
    Patent Appeal No. 2681.
    Court of Customs and Patent Appeals.
    April 15, 1931.
    B. C. Stickney, of New York City (James T. Newton, of Washington, D. C., of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C., for Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   HATFIELD, Associate Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Primary Examiner denying all of the claims, 1 to 22, inclusive, in appellant’s application for a patent for an alleged invention relating to a portable typewriting machine comprising, generally, a typewriting machine, a base, to which the machine is attached, and collapsible and detachable legs connected to the base by means of clamps.

Claims 3 and 17 are illustrative. They read:

“3. The combination with a portable typewriting machine, including a base, of a set of supporting legs, each including a threaded stem, fittings having threaded openings to receive the stems, and movable gripping elements associated with the fittings and engaged and moved by the stems when threaded into the openings, to hold said legs in gripping relation to the base.”
“17. A set of legs foil a portable typewriting machine, including a .clamp for connecting each leg to the machine, one of the' legs chambered to receive the others, and a handle chambered to receive the clamps and co-operating with the chambered leg to form a closed casing for the legs and clamps, said clamps being held against movement within said chambered handle.”

The reference is: Evans, 345,290, July 13, 1886.

Claims 1 to 6, inclusive, were rejected on the reference.

Claims 1 to 11, inclusive, 13, 16, 20, 21, and 22 were rejected on the ground that they do not define a patentable combination, but rather an aggregation of old elements incapable of co-operating to produce a unitary result.

Claims 12, 14, 15,17,18, and 19 were rejected on the ground that they are misdescriptive, in that they state that the legs are attached to the typewriting machine, whereas they are, in fact, attached to the base, which, it was held, is not a part of the typewriting machine.

The patent to Evans discloses a chair having detachable legs.

In describing appellant’s device, and in rejecting claims 1 to 6, inclusive, on the reference, the Board of Appeals said:

“Appellant’s device is a stand intended for use with a portable typewriter. It comprises a supporting plate which is the base of the typewriter easing and to which the typewriter is attached. A set of legs is provided and each leg is detachably connected by means of a clamp to a marginal portion of the base member. These legs are so constructed that after separation from the base and clamps they may be telescoped one within the other and connected to a tubular member in which the clamps are placed. A hand grip may be connected to the other end of the tubular member to form a walking stick. * * *
“This reference discloses a chair to which legs are detachably connected by the fittings 7. As read on appellant’s construction the claims are directed to the feature by virtue of which the act of attaching a leg to its clamp member also causes the clamp member to firmly grip the edge of the base. This is because the threaded portion at the end of the leg forces the jaw member 14 from the position shown in full lines toward the position shown in dotted lines in Figure 5. In the Evans construction relative movement of the fittings 7 and legs 2 to secure the legs to the fittings also causes the legs and fittings to he Secured to the base 1. It is believed that the claims of this group do not patentably differentiate appellant’s connection from that disclosed by Evans. Since the typewriting machine as included in these claims is a matter of aggregation we deem claims 1 to 6, inclusive, unpatentable over Evans.”

It is contended by counsel for appellant that the claimed combination is new; that the base is a part of a portable typewriting machine; that it is so designed as to “eoaet with the legs and frame to produce a portable typewriter”; that the claims define a patentable combination; that they are not misdescriptive; and that the patent to Evans is not a proper reference.

We are unable to agree with the views expressed by counsel for appellant.

It may be that appellant has produced an article of utility, but it does not necessarily follow that the claims define a patentable combination. The base does not, by attachment, become a part of the typewriting machine. It has the same relation to such' machine as any supporting table or desk top. The elements forming appellant’s combination are old, and the result obtained by the combination is but an aggregation of the known functions of the various elements. • Holding these( views, we are unable to say that the tribunals of the Patent Office erred in holding that claims 1 to 11, inclusive, 13, 16, 20, 21, and 22 defined aggregations ratheil than a true patentable combination, and that claims 12, 14, 15, 17, 18, and 19 were misdescriptive. Furthermore, we are inclined to the opinion that claims 1 to 6, inclusive, were properly rejected on the reference.

For the reasons stated, the decision is affirmed.

Affirmed.


text:
    In re DOUGLAS.
    Patent Appeal No. 2654.
    Court of Customs and Patent Appeals.
    March 31, 1931.
    Edward H. Cumpston, of Rochester, N. Y., for appellant.
    T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for Commissioner of Patents.
    Before GRAHAM-, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   LENROOT, Associate Judge.

This is an appeal from a decision of the Board of Appeals of the United States Patent Office affirming the action of the Examiner in rejecting claims 1, 2, 3, 5, and 6, and 9 to 13, inclusive, of appellant’s application as failing to define invention in view of the prior art. Claims 2 and 10 are illustrative of the claims in issue, and read as follows:

“2. The process of preparing peetin from fruits comprising removing the natural sugar therefrom, processing the remaining pulp in the presence of a solvent to obtain the pectin in solution, converting the starch in the solution by the action of a suitable diastatie enzyme, concentrating the resultant solution, precipitating the peetin therefrom with alcohol and drying the precipitate.”
“10. A dry peetin, prepared by alcohol precipitation from a pectin solution from which the natural starch has been removed by the action of a suitable enzyme.”

Four claims appear to have been allowed, but they are not contained in the record.

The references relied upon are as follows: Douglas, 1,235,666, August 7, 1917; Huber, I, 410,920, March 28,1922; Crawford, 1,507,-338, September 2, 1924; Leo, 1,513,615, October 28, 1924; Boylik, 1,393,660, October II, 1921; Goldthwaite on Jelly Making, J. Ind. & Eng. Chem. June 1909, page 239, lines 10 to 14, second column.

Claims 1, 2, 3, 5, and 6 relate to a process for securing dry peetin from fruits, and claims 9 to 13, inclusive, are for the product of that process.

The object of the invention, as stated by the appellant in his specification,.is as follows:

“My invention relates to jellyfying substances and more particularly to dry pectin obtained by alcohol precipitation, and to methods of preparing the same from fruits, the chief object being to provide a dry peetin in a more pure and convenient state, especially as regards the presence of starch, as well as a thoroughly practical and efficient method of preparing the same on a commercial scale.”

One of the reference patents, No. 1,235,-666, was issued to appellant, and relates to jelly making products and a process for producing the same, in which vegetable material is treated to remove the natural sugar therefrom, and the remaining pulp is processed in the presence of a solvent to extract the pectous substances. The pectous liquor is treated to convert the starch by means of a suitable diastatic enzyme. The resulting solution is concentrated in a liquid form. Appellant, in the specification of said patent, states:

“If desired all of the moisture may be removed and the peetotis liquor reduced to a soluble powder. * * * ”

The reference Leo, No. 1,513,615, relates to a method of obtaining a dry powder jelly base containing pectin; the object of the invention being “the production of a purified pectin in powdered form which is free from acid or sugar or any other foreign substance.” The specification further states: “This dry powder is a pectous body comprising from 95% to 100% of the following ingredients: peetin, peetose, a small amount of peetase, and some calcium pectate.” The peetin is obtained in a solution which may then be concentrated. The specification further states:

' “This concentrated solution is then treated with alcohol, which results in the precipitation of the pectous bodies. This alcohol may be ethyl or methyl alcohol or a combination of both, as desired. Preferably three gallons of alcohol are added to each gallon of concentrate. The solid pectous bodies precipitated from the solution are separated therefrom, preferably in a centrifugal machine, and are then perfectly dried by the well-known atomizing process, which results in the blowing of the material into a room, whereby it immediately forms into a dry powder, which can be collected and sold.”

The reference “Goldthwaite on Jelly Making” discloses the isolation of peetin by making a peetin solution in which the peetin is eventually obtained in solid form by precipitation by alcohol. The process of this precipitation is described as follows:

“ * * * A given volume of the cold, filtered (previously boiled) fruit-juice was added drop by drop by means of a separator funnel to an equal volume of alcohol, stirring constantly; the mixture was allowed to stand over night in a cold plaoe and then the precipitated jelly-like mass of pectin was separated from the liquid by filtering off through very fine cotton cloth stretched tightly over the mouth of a 4-liter jar. The liquid was worked out of the mass by means of a spatula. Repeated re-solution and re-precipitation of the peetin improved its purity. The peetin so obtained was a very stable, nearly colorless, transparent solid. * * * ”

It is not necessary to consider the other references relied upon. i

All of the appealed process claims were rejected on the patent to Douglas on the ground that it is not inventive to precipitate, by the use of alcohol, the peetin from the solution there shown, in view of either Leo or Goldthwaite. Claims 9 to 13, inclusive, for the product, were rejected on the ground that they improperly define the product by the process of making it.

Appellant concedes that the process of preparing peetin from fruits, comprising the removal of the natural sugar therefrom and processing the remaining pulp in the presence of a solvent to obtain the peetin solution, which are elements in one form or another in all of the process claims here involved, is fully shown in the Douglas reference. He also concedes that the element of said process claims — “converting the starch in the solution by the action of a suitable diastatie enzyme” — is also disclosed in the Douglas patent, but argues that, as there disclosed, said step of the process was for an entirely different purpose than that involved in the present application. The Douglas patent does not disclose the remaining element of the claims, to wit, “precipitating the pectin therefrom with alcohol and drying the precipitate,” as it is stated in claim 2, above quoted.

Appellant contends in his brief as follows:

“ * • * It was Douglas only who conceived the idea of what may be termed a two-stage purification process involving the production first, of a purified solution and the extraction from that solution by precipitation of pure pectin and nothing else. No one else had ever devised this method nor produced the highly purified starch-free pectin whieh is the product.
“The evolution of this process was not the simple, off-hand matter which was evidently all that the Examiner saw in it. Many minor problems had to be solved before accomplishing success. One of these was the recognition of the fact that the 10 to 25% starch content would be precipitated along with the pectin. To overcome this difficulty he conceived of the use of fermentation by a diastatie enzyme, not for the purpose of preventing starch from reacting with fruit tannins, but for the different purpose of rendering the starch soluble in alcohol so that it would not be precipitated. Another difficulty was that the addition of the alcohol to the solution, as taught by the prior art, yielded a pectin precipitate of an impracticable form to handle. It was necessary for him then to devise the step of adding the solution to the alcohol and below its surface, as well as the subsequent repeated dehydration of the precipitate with alcohol, whieh the Patent Office has recognized as invention by the allowance of some of the claims. These and many other problems beset the path of the inventor but they passed unnoticed in the superficial consideration of the ease by the Patent Office, except for the claims allowed on the final step of dehydration whieh are by no means commensurable with the invention.”

We think that the Douglas patent clearly discloses all of the elements of the process claims here in issue except that which covers the precipitation by means of alcohol. The fact that the disclosure in the Douglas patent of converting the starch in the solution by the action of a suitable diastatie enzyme was for a, different purpose than that stated in the present application is, we believe, immaterial, because he showed how the starch in the solution could be converted by the aetion of a suitable diastatie enzyme, leaving the resultant solution free from starch.

Wé think the process of precipitation shown by the Leo reference, and by the Goldthwaite publication, so far as the claims here in issue are concerned, is essentially the same as the process of precipitation shown in appellant’s application, and the question arises Whether 'it constitutes invention to apply, as a further step to the process shown by the Douglas patent, the process of precipitation, shown by Leo and Goldthwaite.

Appellant insists that the process of precipitation shown by Leo, applied to the solution obtained by Leo through carrying out the various steps of his process, results in a 10 per cent, to 25 per cent, contamination by starch, and further that his final product contains not pectin aloné, but peetose, peetase, and calcium pectate as well. In this we think appellant is correct, but it is also true that the precipitation process disclosed by Leo, applied to the-process disclosed in the Douglas patent, would, so far as the claims here in issue are concerned, result in a product in all respects comparable to the product produced by appellant. The difference in purity between the product of appellant and that' of Leo is due, not to the process of precipitation here involved, but to the character of the respective solutions before the precipitation process is applied. It is our opinion that any. skilled chemist, desiring to precipitate to a dry state the pectin in a solution such as shown by the Douglas patent, and having knowledge of the disclosure of the Leo patent and of the Goldthwaite publication, would apply the precipitation method there disclosed to said solution, and that this would not require the exercise of the inventive faculty.

Appellant shows that the validity of appellant’s prior patent has been established in the courts and contends that the decision-rendered by the Court of Appeals for the Second Circuit in the case of Douglas Pectin Corporation v. Armour & Co., 27 F.(2d) 814, shows the patentability of the claims here, in issue. We have carefully examined this opinion, and it is sufficient to say that the questions before us were in no way involved in said ease.

We hold that there is no invention, in view of Leo and Goldthwaite, in adding to the process disclosed by the Douglas patent the precipitation of pectin from the solution there shown by means of alcohol and drying the precipitate.

With regard to the product claims, they are all limited by one or more of the steps of the process involved in the process claims. It is not clear to us that the product secured could not be described without reference to appellant’s method; but, however this may be, we agree with the Board of Appeals that the product claims are not patentable.

The decision of the Board of Appeals is affirmed.

Affirmed.


text:
    WILLIAMS v. HANDSCHIEGL.
    No. 2664.
    Court of Customs and Patent Appeals.
    April 15, 1931.
    Interference proceedings between Frank D. Williams and Max Handsehiegl. Decision for the latter, and the former appeals. Affirmed.
    Joseph W. Milbum, of Washington, D. C. (Joseph F. Westall and Ernest L. Wallace, both of Los Angeles, Cal., Roger D. Gessford, of Washington, D. C., and Westall & Wallace, of Los Angeles, Cal., of counsel), for appellant.
    E. W. Shepard, of Washington, D. C. (Frank L. A. Graham, of Los Angeles, Cal., of counsel), for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   HATFIELD, Associate Judge.

This is an appeal in an interference proceeding from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the examiner •of interferences awarding priority of invention to the senior party, Max Handschiegl.

The invention relates to a method of producing composite pictures, and is fully described in the single count in issue. The count reads: “The herein described photographic method of producing composite pictures, which consists in photographing upon, two strips of sensitized film a component object against a black background to produce a pair of matched photographed impressions, treating one of said strips to produce a silhouette of said component object thereon, projecting a supplemental object on the other strip of raw film through said silhouette film whereby the photographed impression is masked and the supplemental object is photographed on the raw film.”

Appellee, Handsehiegl, the senior party, filed his application on January 2, 1923.

Appellant, Williams, the junior party, filed his application on March 13,1924.

Appellant filed a motion to dissolve the interference on the ground that appellee’s application did not disclose an operative process.

Although the court is not favored with a copy of his decision, it appears from the record that the law examiner denied the motion to dissolve. Thereafter, appellant submitted considerable testimony for the purpose of establishing the inoperativeness of the method disclosed in appellee’s application.

It is not contended here that appellant is entitled to an award of priority, if it should be held that the method disclosed in appellee’s application is operative. On the contrary, counsel for appellant concedes that the issue of operativeness is the only one this court need consider.

Appellee stated in his specification that his method might be performed “with double camera arrangements, but I prefer in the practice of my invention to employ a single lens camera as indicated * * * and to run the films together, one placed upon the other. * * * In this manner, the light impression of the image passes through the film B and is received by the film A, an exact duplication and registering of the light impressions being thereupon obtained.”

It is claimed by counsel for appellant that it is evident without experimentation that the Handsehiegl method of using superposed film strips will not produce accurately matched photographed impressions; and that, if any portion of a “composite negative showed overlapping images or was bordered by an unexposed rim or apparent halation,” it would be defective for both motion picture production and ordinary photographic work.

In Ms brief, counsel for appellant contends that tbe Handschiegl method of using superposed film strips is inoperative for the following reasons:

“As is well known, films used in photographic work are covered with a sensitized emulsion of yellow color and of such character that it is to a great extent impervious to light rays (Rec., pp. 101-102). In the first exposure made according to the Handschiegl method, the light rays which fix an impression of the object upon the sensitized coating of the front film must pass through the coating, as well as through the transparent but thicker celluloid base, in order to reach the sensitized coating of the rear film. Because of the diffusion of the light rays, the outline of the rear image will not be clearly defined. That the light rays will be deflected as well as diffused in thus passing through the front film is perfectly apparent, and requires no demonstration or argument. Due to the normal divergence of the light rays and their deflection by reason of the thickness of the film, the mask image of the’ object on the rear film will be larger than the image of the same object on the front film.
“The difference in the size of the images is made even more objectionable when the larger mask image is placed in front of the image upon the raw film in the succeeding step. The larger silhouette image, because of the divergence of the light ra3rs, will mask a still larger area on the raw film. The final picture will consequently have a line about the image which will produce an apparent halation.”

For the purpose of establishing the inoperativeness of the Handschiegl method, certain tests were made by experienced motion picture cameramen at the Metro-Goldwyn-Mayer studio, at Culver City, Cal., in the presence of the parties and their counsel.

The cameramen, Ray 0. Binger, J. C. Smith and John J. Mescall, testified in substance that the results of the test indicated to them that the method of using superposed film strips would not be commercially successful in the production of motion pictures.

The witness Ray 0. Binger said that he could not think of any condition during his experience in which the results obtained by the test in which he participated would benefit him to any extent.

- The witness Smith, in concluding his testimony relative to the test, testified as follows: “Q. Do you consider the experiment a success in the results that you attempted to seeuré? . A. For a commercial film, no.”

The testimony of the witness Mescall was brief. After stating how the tests were performed and without describing the condition of the film after exposure, he. testified as follows: “Q. Were the films in their finished condition a success for composite pictures ? A. No.”

Sydney D. Lund testified for appellant. He stated that he had been employed by appellant for about five years. He said that he had made several tests of the method of using superposed film strips, at the direction of appellant; that the method was not commercially successful; that he believed appellant wanted the tests made to show the Patent Office tribunals that the method described in appellee’s specification was not commercially practicable; that he was present when the tests were made in the Metro-Goldwyn-Mayer studio; and that “the final negative was very poor in regards to being used for a commercial product due to the fact that the figure was very transparent when exposed on a background. Also as I stated before, had a bad black fringe all around the figures. I want to state that under no conditions could these pieces of film been finished to make a good looking commercial product.”

In his decision, the examiner of interferences described the tests in considerable detail. He offered the suggestion that the criticism of appellee’s method could be met by placing two sensitive surfaces in contact with each other, and that there was notMng in the record except a general statement by appellant to show that such a “face to face operation would be inoperative.” He further called attention to the fact that the tests made at the studio were restricted to motion picture films. He then said:

“Even if the process of superposed films should be found inoperative for motion picture work it might be workable for still exposures.
“In the field of motio'n picture photography Williams has by no means demonstrated inoperativeness in the sense in which that word is used in patent law. * * *
“The only conclusion to be drawn from the testimony of these three photographers with respect to the Metro-Goldwyn-Mayer tests is that the Handschiegl superposed film process was not a commercial success for motion picture photography. Nothing can he concluded from these tests or from the testimony of the three photographers as to whether the process might have been successful for still photography or as to whether it might have been operative in the patent sense for motion pictures. * * * It is altogether possible that the use of the process even in still pictures would require some touching. From-; this however, it can not be concluded that the process is inoperative for still photography or even that it is inoperative for motion picture work.”

The examiner made no reference in his decision to the double camera arrangement mentioned in appellee’s specification, but concluded his discussion of the issues in the case by holding that appellant had failed to prove conception of the invention prior to the filing date of appellee, and, accordingly, awarded priority of invention to appellee.

The Board of Appeals concluded that there was “strong doubt of the operativeness of the process if carried out by exposing the two films, one behind the other,” and with reference to the operativeness of the Handschiegl method for still pictures said: “Both applications state that their object is to produce motion picture films and we have no information as to whether the results would be useful in still pictures.”

Thereupon, the board referred to the double camera arrangement mentioned in appellee’s specification, called attention to the fact that appellee did not intend to be confined to any specific way for making the “two negatives,” and stated that if there were any means known to those skilled in the art for carrying out appellee’s process, it could not be held to be inoperative. It then said: “There is in Class 95, Photography, a subclass 18, Cameras, Simultaneous Exposure, in which there are many patents disclosing cameras for this purpose. We call attention to a few which were selected to show a construction similar to that disclosed diagrammatically in the 'Williams application, see Brewster, No. 1,222,925, April 17,1917, Ives, No. 475,084, May 17, 1892, and Ives, No. 703,929, July 1, 1902. It is evident that when the negatives are taken in these cameras one of them would be as well exposed as the other and the method could be carried out without difficulty. We must therefore hold that Handschiegl’s process is not inoperative and as Williams has failed to overcome his filing date for either conception or reduction to practice, we affirm the decision of the Examiner of Interferences and award priority of invention to Max Handschiegl, the senior party.”

After giving careful consideration to the testimony, we are in accord with the views expressed by the examiner of interferences that the witnesses who were present and participated in the tests at the studio intended to be understood as saying that from the results produced by the tests there made, the method of using superposed film strips was not a commercial success in the production of motion pictures. Lund and Smith both testified squarely to that effect. Binger confined his observations to the proposition that he did not see how the method would be helpful to him. Mescall, alone, testified that the test convinced him that the method was not a success for making composite pictures.

It was incumbent upon appellant to establish that appellee’s method of using superposed film strips in the production of composite pictures would not actually perform the functions claimed for it. Proof that it is imperfect in operation, that it performs its functions in a crude way, or that it does not meet commercial requirements, is not sufficient to establish inoperativeness in a patentable sense. Hildreth v. Mastoras, 257 U. S. 27, 42 S. Ct. 20, 66 L. Ed. 112.

Furthermore, all of the testimony relating to the tests was limited to the use of the method in the production of motion pictures. There is no testimony in the record to show that the method would not be successful in the production of so-called still pictures.

It is contended by counsel for appellant, and it was suggested in the decision of the Board of Appeals, that the count in issue is limited to a method of producing motion pictures. In our opinion, the count is not so limited. Appellant stated in his specification that “this invention relates to a process of producing composite pictures whereby two objects may be photographed and superimposed to produce in effect, a unitary picture.”

Counsel for appellant also contends that appellee’s disclosure of double camera arrangements is vague and insufficient, and that, as the patents referred to in the decision of the Board of Appeals were not introduced in evidence, the board had no authority to consider them for the purpose of supplementing appellee’s disclosure. Holding the views hereinbefore expressed, it is unnecessary for us to consider this issue.

We are in accord with the conclusion reached by the Board of Appeals, and its decision is affirmed.

Affirmed.


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    J. B. WILLIAMS CO. v. WILLIAMS.
    Patent Appeal No. 2659.
    Court of Customs and Patent Appeals.
    March 31, 1931.
    Arthur B. Jenkins, of Hartford, Conn. (Hubert Howson, of New York City, and Theodore K. Bryant, of Washington, D. C., of counsel), for appellant.
    Clarence A. O’Brien, Charles E. A. Smith, and Thomas E. Turpin, all of Washington, D. C., for appellee.
    Before GRAHAM, Presiding Judge, and BLAND; HATFIELD, GARRETT, and LENROOT, Associate Judges.
   GARRETT, Associate Judge.

This appeal involves the right of appellee to register a facsimile of his own autographically produced name as a technical trademark under the Trade-Mark Registration Act of 1905 as amended (15 USCA §§ 81-109).

His application is to register “E. W. Williams,” in the form of a facsimile produced from his own signature, for use as a mark on a cream, or lotion, to be used after shaving. Use of the mark is claimed since January 1, 1928.

Opposition is made by appellant, who claims to have been engaged, through itself and predecessors, in the manufacture and distribution of “Williams’ ” shaving soap since about 1840, and of other tetions or articles used in connection with shaving for many years antedating appellee’s entry into the field. Appellant alleges many registrations of the word “Williams,” the first being for shaving soap as far back as March 25, 1873.

The last registration cited is one for “After-Shaving Preparations” dated April 10, 1928.

It is stated that, in all, appellant has procured 21 registrations; that two of these embody the full name, “The J. B. Williams Company”; one shows the name of the company in the possessive sense; seven are for the word “Williams” alone as a trade-mark; and that all the “Williams” marks “are applied in the possessive ease as a name for the goods.” Some of appellant’s registrations appear to have been obtained under the “ten-year” provision of the 1905 Act.

The notice of opposition contains the usual allegations as to advertising, large sales, etc., and charges probability of confusion and injury to appellant.

The Examiner of Interferences sustained the opposition: Upon appeal his decision was reversed by the Assistant Commissioner, and the matter is before us upon an appeal from the decision of the latter.

Admittedly, the goods are of the same descriptive properties.

In view of the fact that the respective marks of both parties have the word “Williams” as the clearly dominant and peculiarly noticeable part thereof, we take it there would be little or no hesitation in holding them to be similar, in the sense of the statute, except for two features:

First, the fact that appellee, E. W. Williams, creates his mark as a facsimile of one written with his own hand, thus giving to it a certain distinctiveness, or characteristic, not present in the mark of appellant;. and

Second, the fact that it is appellee’s own name which he seeks to register.

As for the first there is this to be said:

A proviso of section 5 of the Trade-Mark Registration Act of 1905 (15 USCA § 85) reads, in part:
“ * * * No mark which consists merely in the name of an individual, • • * not written, * • * in some particular or distinctive manner, * * * shall be registered under the terms of this subdivision of this chapter.”

There is also a further proviso, reading:

“That nothing herein shall prevent the registration of a trade-mark otherwise registerable because of its being the name of the applicant or a portion thereof.”

The Assistant Commissioner held that in view of the fact that applicant’s mark is a facsimile signature it is not .deceptively similar to the mark of appellant, stating that a facsimile signature is regarded by the Patent Office as being the writing of an applicant “in some particular and distinctive manner.”

The individuality inherent in the handwriting of each person is evidently regarded by the tribunals of the Patent Office as meeting the “particular or distinctive manner” requirement of the first proviso above quoted. Ex parte Mark Cross Co., 1903 C. D. 23, and. Ex parte John H. Wilkins Co., 128 MS Dec. 409, are cited.

Under the view which we take of this ease it is not necessary here to pass upon the soundness of this position of the Patent Office tribunals. We incline to the opinion that it is correct and that the autographic forming of a name overcomes the general negation of the quoted proviso. But in eases like this we must look beyond that immediate question, and hence do not pass upon it here, as a matter standing alone.

The statute must be considered as d whole, and all parts of section 5 (15 USCA § 85) must be so construed together as to give them their proper force and effect.

We must therefore consider the provisos, already quoted, supra, not only in connection with each other, but in connection with that language of the section which relates to the resemblance of the marks. .The text necessary for consideration here is accurately arranged in the Assistant Commissioner’s decision and we take it therefrom:

“That trade-marks * * * which so nearly resemble a registered or known trademark owned and in use by another and appropriated to merchandise of the same descriptive properties as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers shall not be registered: Provided, That no mark which consists merely in the name of an individual "* * * not written * * * in some particular or distinctive manner * * * shall be registered under the terms of this Act: * * * Provided further, That nothing herein shall prevent the registration of a trade-mark otherwise registerable because of its being the name of the applicant or a portion thereof.”

We do not think it can properly be held that the mere differentiation in the appearance of a name wrought by individual characteristics of handwriting can eliminate the confusion likely to arise by applying that written name, or a facsimile thereof, to goods of the same descriptive properties as those of another person to which the same name has been or is being applied.

The first proviso quoted, supra, is, of course, not limited to an applicant’s own name. Any individual’s name written in “some particular or distinctive manner” may be registered unless forbidden by other provisions of the law.

It is the last-quoted proviso which deals specifically with the registration of an applicant’s name, and that proviso contains the significant words, “otherwise registerable.”

Obviously, these words imply that Congress did not intend to permit a person to register his own name under any and all circumstances.

We really assume that in order to register it under the general provisions of the act of 1905 (not taking the “ten year” clause into account) it must be “written, printed, impressed, or woven in some particular or distinctive manner. * * * ” Whether this' be true or not, we feel certain that it must not so. nearly resemble a registered or known trade-mark, owned or used by another, as to cause confusion when applied to goods of the same descriptive properties.

No question is here made as to the validity of appellant’s mark.

In considering eases like this we must bear in mind the legal distinction between the common-law right of a person to use his own name in his own business and the statutory right to register it as a technical trade-mark.

Even the common-law right of use has limitations, as the courts have frequently declared.

A person may not use his own name in a manner which will deprive another of the same name of the goodwill of a business which the latter has established. Rogers v. Rogers (D. C.) 11 F. 495.

Many authorities might be cited upon this point, but it is deemed unnecessary unduly to lengthen this opinion by so doing.

It seems tó us that where one elects to make a technical trade mark use of his own name, that name,, for that purpose, becomes dissevered, as it were, from its owner’s personality, and when he seeks to register it under a statutory enactment, if must be tested by precisely the same rules and principles which apply to all other technical trade marks.

The goods of appellant and appellee being of the same descriptive properties and their marks of such close resemblance, appellant, as the prior user, has the right to oppose appellee’s registration, and since we are sure confusion must inevitably result from appellee’s use of his mark, its registration must be denied.

The decision of the Assistant Commissioner is reversed.

Reversed.


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    REVERE SUGAR REFINERY v. SALVATO.
    Patent Appeal No. 2640.
    Court of Customs and Patent Appeals.
    March 31, 1931.
    Harrison P. Lyman, of Boston, Mass., for appellant.
    Josiah McRoberts, of Chicago, Ill. (Chas. B. Riordon, of Washington, D. C., of counsel), for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATPIELD, GARRETT, and LENROOT, Associate Judges.
   HATFIELD, Associate Judge.

This is an appeal in a-trade-mark opposition proceeding from the decision of the Commissioner of Patents dismissing the opposition of appellant and holding that appellee w.as entitled to the registration of a trade-mark, comprising, as its essential features, the word “Revere” appearing immediately above the pictorial representation of a horse and rider (representing Paul Revere on his famous ride), for use on certain meat products, condiments, canned and fresh vegetables, canned, fresh, and preserved fruits, .canned fish, food flavoring extracts, canned soups, syrups, flour, tea, and other grocery goods.

In his application for registration filed November 28, 1924, appellee alleged that he had used the trade-mark since March 10,1922.

In its notice of opposition, appellant alleged that it was the owner of a trade-mark, comprising the word “Revere” appearing immediately above a pictorial representation of a man riding on horseback, for use on sugar; that it had used the mark since long prior to the first use by appellee of his alleged trade-mark; that the goods of the parties possessed the same descriptive properties ; that the trade-marks wére confusingly similar; and that appellant would be damaged by the registration to appellee of his alleged trade-mark. Appellant also pleaded registration No. 102,174, issued January 26, 1915, of its trade-mark for use on sugar.

It .appears from an agreed statement of facts submitted by the parties that appellant and its predecessors used the word “Revere” as a trade-name on its goods from 1873 to' April, 1912; that since 1912 appellant has used its registered trade-mark on six different types of sugar; that its sugar is sold in grocery .and other stores in cardboard containers, and also in five, ten, and twenty-five. pound sacks; that it has expended large sums of money in advertising its goods under its trade-mark; that, since 1922 its sales have exceeded $21,000,000 annually; that its goods are well known to the public throughout the United States as “Revere sugar”; that appellee is in the wholesale grocery business at Chicago, Ill., under the name “Revere Wholesale Grocery Company,” and has used the involved trade-mark on some of the articles enumerated in the application for registration since March 10, 1923, and on the other-enumerated .articles since October 18, 1927; that the name “Revere” is, and for longer than a century has been, a “surname or proper name” in the United States; that there are cities and villages in the United States by that name; that several corporations have the name “Revere” as a part of their corporate name; and that the involved trade-mark has been registered by many others for use on a variety of products, including wheat flour.

The Examiner of Interferences held that, with the exception of maple syrup and cane syrup, the goods of the respective parties did not possess the same descriptive properties; that appellant had used its trade-mark since long prior to any use by appellee of his trade-mark; and that, .although the marks so closely resemble each other as to be likely to cause confusion in the trade, appellee was entitled to register his mark on all articles named in the application for registration, except maple syrup and cane syrup.

The Commissioner of Patents held that appellant had used its trade-mark since long prior to its use by appellee; that appellant’s trade-mark was a valuable .asset in its business; that the marks were substantially the same; that, with the exception of maple syrup, cane syrup, candies,’sugared ginger, sugared kumquats, sugared dates, candied orange peel, candied lemon peel, and candied citron, the goods of the parties did not possess the same descriptive properties; and that therefore appellee was entitled to the registration of its mark for use on all other products set out in his application for registration.

It is claimed by appellant that the goods of the parties possess the same descriptive properties, that the marks are confusingly similar, and that it will be damaged by the registration of the involved trade-mark to appellee.

It is contended by counsel for appellee that the goods of the parties do not possess the same descriptive properties, that appellant is not the originator of its trade-mark and therefore is entitled to limited protection only, and that appellee is entitled to have his mark registered.

The validity of appellant’s trade-mark registration is not before us, and will not be considered by this court in a proceeding of this character. Sharp & Dohme v. Parke, Davis & Co., 37 F.(2d) 960, 17 C. C. P. A. 842; American Fruit Growers, Inc., v. Michigan Fruit Growers, Inc., 38 F.(2d) 696, 17 C. C. P. A. 906; National Biscuit Company v. Joseph W. Sheridan, 44 F.(2d) 987, 18 C. C. P. A. -; Decker & Cohn, Inc., v. S. Liebovitz & Sons, Inc., 46 F.(2d) 179, 18 C. C. P. A.; Celanese Corporation of America v. Vanity Fair Silk Mills, 47 F.(2d) 373, 18 C. C. P. A.-.

Appellee is in the wholesale grocery business, and the food products on which he uses his alleged trade-mark are sold in the same stores as the goods of appellant. The trademarks are almost identical. It would seem to us, therefore, that, if appellee is permitted to use his alleged trade-mark on his goods concurrently with the use by appellant of its trade-mark on its goods, confusion as to the origin of the goods of the respective parties would likely result. Accordingly, we are of opinion that the goods of the parties possess the same descriptive properties within the principles heretofore announced by this court. California Packing Corporation v. Tillman & Bendel, 40 F.(2d) 108, 17 C. C. P. A. 1048; B. F. Goodrich Co. v. Hockmeyer (Zip-on Co., Substituted) 40 F.(2d) 99, 17 C. C. P. A. 1068; Sun-Maid Raisin Growers - of California v. American Grocer Co., 40 F.(2d) 116, 17 C. C. P. A. 1034; Cheek-Neal Coffee Co. v. Hal Dick Mfg. Co., 40 F.(2d) 106,17 C. C. P. A. 1103; Cluett, Peabody & Co., Inc., v. Hartogensis (Arrow Emblem Co.) Inc., Substituted), 41 F.(2d) 94, 17 C. C. P. A. 1166; Kotex Company v. Clarence M. McArthur, 45 F.(2d) 256, 18 C. C. P. A.-.

It appears from the record that appellant has used its trade-mark since long prior to. the adoption and use by appellee of his alleged trade-mark; that the goods of the parties possess the same descriptive properties; that the marks are confusingly similar; and that appellant would be damaged by the registration of appellee’s alleged trade-mark.

Accordingly, the decision of the Commissioner of Patents is reversed.

Reversed.

GARRETT, Associate Judge, concurs in. the conclusion.