author: C0XE, District Judge.

text:
    In re LIVERPOOL, BRAZIL & RIVER PLATE STEAM NAV. CO., Limited, et al.
    District Court, S. D. New York.
    Feb. 3, 1931.
    Burlingham, Veeder, Fearey, Clark & Hupper, of New York City ( Van Veehten Veeder and Chauneey I. Clark, both of New York City, of counsel), for petitioners:
    Hunt, Hill & Betts, of New York City (Geo. Whitefield Betts, Jr., of New York City, of counsel), for Frederick F. Brown and others.
    Bigham, Englar, Jones & Houston, of New York City (Osear R. Houston and W. J. Nunnally, Jr., both of New York City, of counsel), for claimants.
   C0XE, District Judge.

This is a motion by claimants in limitation proceedings for “an order dismissing the petition unless the petitioners furnish further security.” The claims already filed exceed $4,000,000, and the ad interim stipulation amounts to $90,000. There is a contest with respeet to the right to limit, and it is insisted by the claimants that pending a determination of that issue there .should be an additional security to protect the claimants in the event limitation is denied.

The principal grounds for the motion are (1) that one of the petitioners is now in the hands of a receiver; and (2) that the other petitioner has recently withdrawn a number of its vessels from American service and is planning to remove its property beyond the reach of the court.

I find nothing in the Limitation Statute or the Rules which permits this court to exact security beyond that required as a prerequisite to the institution of the proceeding. I do not think either that the injunction may be withheld or withdrawn unless additional security is furnished to protect the claims in the event limitation is denied. To do so would defeat the beneficial purpose of the statute, so often recognized by the Supreme Court. And the court cannot properly seek to accomplish by indirection what it is unable to do by direction by withdrawing the injunction to permit attachments to issue in State Court actions.

The injunction is statutory, The City of Norwich, 118 U. S. 468, 6 S. Ct. 1150, 30 L. Ed. 134, and, although there is broad general power to maintain the equitable character of the proceeding, The Salvore (C. C. A.) 36 F.(2d) 712, there is no authority to inject conditions which may be burdensome and have nothing to do with the equitable jurisdiction. Furthermore, it is not apparent how such attachments, if obtained, could be utilized by the claimants in the event limitation should be denied. For it is now settled that the admiralty court has exclusive jurisdiction to adjudicate the filed claims and render judgment in rem and in personam, even if the claimants succeed in defeating limitation. Hartford Accident & Indemnity Co. of Hartford v. Southern Pac. Co., 273 U. S. 207, 47 S. Ct. 357, 71 L. Ed. 612; The Linseed King (D. C.) 24 F.(2d) 967. And it makes no difference in that respeet that there is still uncertainty regarding the status of unfiled claims [The Agwisun (D. C.) 20 F. (2d) 975], and'claims which have not submitted to the admiralty jurisdiction [The Aloha (C. C. A.) 35 F.(2d) 447, certiorari granted, Langnes V. Green, 281 U. S. 708, 50 S. Ct. 246; 74 L. Ed. 1131].

The cases cited by the claimants are plainly distinguishable. In The Titanic (C. C. A.) 204 F. 260, the injunction was lifted to permit a death claimant to commence an action in the state court in order to avoid the bar of the Statute of Limitations. The sole reason for the decision was a doubt as to the legal status of the claim in the event limitation should be denied, and it was thought the claimant should be protected in the state court if ultimately required to enforce his claim there. This, doubt had now been completely removed by the decision of the Supreme Court in Hartford v. Southern, supra. In any event, the case cannot be regarded aá an authority for the broad contention advanced by the claimants on the present motion. Neither is The Agwisun, supra, to be stretched beyond its peculiar facts. In that case, the injunction was withdrawn to compel the filing in an adjoining district of a stipulation of value which the petitioner had pres•viously agreed to furnish, and which the cburt thought might conceivably be enforced in the event limitation was refused. The Salvore, supra, held merely that, inasmuch as the limitation proceeding was equitable in its nature; the petitioner should do equity before he could properly ask the court to grant equitable relief. He was, therefore, required to submit to a temporary stay of the prosecution of actions against the claimants in Italian courts as a condition to the maintenance of the limitation proceedings. In none of these cases was there anything more than the exercise of a sound discretion in aid of the general equity jurisdiction of the court; and this is not enough to sustain the present motion.

The motion for further security is there¡fore denied.


source: Caselaw Access Project

author: WATSON, District Judge.

license: Public Domain

text:
    HARRISON v. UNITED STATES.
    No. 2278.
    District Court, M. D. Pennsylvania.
    May 20, 1931.
    R. L. Levy and Frank T. Butler, both of Scranton, Pa., for plaintiff.
    Andrew B. Dunsmore, U. S. Atty., of Wellsboro, Pa., A. A. Vosburg, Asst. U. S. Atty., of Scranton, Pa., and John M. Dervin, Regional Attorney, United States Veterans’ Bureau, of Philadelphia, Pa.
   WATSON, District Judge.

This is an action on a policy of war risk insurance.' The ease was tried before a jury, and resulted in a verdict for the plaintiff. The defendant moved for a new trial, which motion is now before the court for disposition.

There was evidence that the plaintiff entered the United States Army May 14, 1918, and was in such service until October- 7, 1918; that, on or about May 17, 1918; the plaintiff was granted war risk insurance, in the sum of $10,000, pursuant to the act of Congress; that the insurance was made payable to him in installments of $57.50 per month for a period of 240 months in ease of his being totally and permanently disabled while the insurance was' in force; that the insurance was in force up to December 1, 1918; that," in August, 1918, the plaintiff'was in the service in Waco, Tex.; that he lost weight and strength; that he was taken from the ranks by medical officers and sent to a base hospital; that he was thereafter placed in a convalescent company; that he continued to grow weaker and had night sweats; that he was discharged from the military service October 7, 1918, for the reason that he had hyperthyroidism; that, on leaving the Army, he started for his home in Scranton, Pa.; that he was in a weakened condition, and stopped in Buffalo, N. Y., on his way; that, in Buffalo, his weakened condition continued, and he remained there in bed for ten days, when he continued on his trip to Scranton; that, on reaching Scranton, he was-compelled to go to bed; and was required to remain there until December 25th of that year; that in February, 1919, he went to Philadelphia, where he worked part time, and was discharged after six weeks, because his physical condition did not permit him to do the work required of him; that in June, 1919, he went to Erie, Pa., where he worked answering a telephone for two weeks; that in September, 1919, he went to Syracuse, N. Y., and attempted to work; that his condition grew worse, and he had swelling of the legs and feet; that he was in bed in Syracuse for about two months; that he was in the hospital in Syracuse for two months; that in 1920 and 1921, for about one year, he was in vocational training in Syracuse; that his health grew worse, he lost weight, coughed, and raised blood; that in 1922 he was sent to the Daily Rest Sanitorium, Orwell, N. Y., where the patients were tubercular; that he was sent to Mt. Alto Sanitorium, where the patients were tubercular; that he was sent to Pocono Pines Sanatorium, where he remained for about fourteen months; that, since his discharge, from the Army, he has attempted to work, but hemorrhages started, and he had to stop work; that he has not been able to follow continuously any gainful occupation of any kind; and that he had an- active tuberculosis disease in 1924.

The defendant filed several reasons for a new trial. In the first, second, third and fourth reasons, the defendant relies upon the refusal.of the court to charge the jury as requested in defendant’s first, third, fourth, and fifth points.

The first point was a request to charge the jury that, under all the evidence, the verdict should be for the defendant. There was ample evidence to show that the plaintiff was totally and permanently disabled during the life of his policy of insurance, to the extent that he could not engage in any occupation continuously without impairment to his jiealth.

The third and fourth points were in the following language:

“3rd. The discharge of the plaintiff from the army offered in evidence by the plaintiff shows that the army doctors did not find him to be then suffering from tuberculosis, and the plaintiff has called no physician who attended him before the date of discharge to testify to the existence of this disease prior to that time. If the jury find that the army doctors were correct in this diagnosis then the plaintiff is not entitled to a verdict.
“4th. The physician who attended the plaintiff shortly after he left the.army, and again in 1923, was of the opinion and so testified when called by the plaintiff, that when he first attended him he was suffering from the Flu, and later he diagnosed the ease as Bronchitis; and he also testified that he did not suspect at any time while he treated the plaintiff, that Harrison was subject to the disease known as tuberculosis. If the jury believe that this physician called by the plaintiff was correct in his testimony, then the plaintiff is not entitled to recover.”

Here the court was requested' to charge in direct conflict with section 200 of the World War Veterans’ Act as amended by Act July 2, 1926, § 7 (U. S. Code Annotated, title 38, § 471), which provides inter alia as follows:

“That an ex-service man who is shown to have or, if deceased, to have had, prior to January 1, 1925, neuro-psychiatric disease, spinal meningitis, an active, tuberculosis disease, paralysis agifans, encephalitis lethargi-ca, or amoebic dysentery developing a 10 per centum degree of disability or more in accordance with the provisions of section 474 of this title, shall be presumed to have acquired his disability in such service between April 6, 1917, and July 2, 1921, * * * and said presumption shall be conclusive in eases of active tuberculosis disease.”

This section of the World War Veterans’ Act applies to actions for war risk insurance. Brandaw v. United States (C. C. A.) 35 F.(2d) 181. There was evidence that the plaintiff did have an active tuberculosis disease prior to January 1,1925. The court ' could not properly have charged the jury as requested in the third and fourth points.

The court charged the jury twice in the language of the fifth point by reading the point to the jury, so that the defendant can have no ■ complaint for that reason.

The fifth reason for a new trial reads as follows:

“Fifth: The learned Court erred in refusing to allow counsel for the defendant to ask a physician for an opinion based upon testimony which the physician had heard in court.”

The part of the testimony to which the defendant probably refers is the following:

“By Mr. Dervin: Q. I am going to ask the question I asked originally. Have you heard the evidence in this ease? A. Yes, sir.
“Q. Have you heard the plaintiff testify ? A. Yes, sir.
“Q. Were you sitting in a position where you heard every word of the statements? A. Yes, sir.
“Q. From all the evidence in this case, is it your opinion that the plaintiff was permanently and totally disabled subsequent to his enlistment in the army and prior to Dec. 1, 1918?
“By Mr. Levy: The question is objected to as incompetent. (Objection sustained.)”

The question was objectionable, if for no other reason than that it failed to include, “to the extent that he could not engage in any gainful occupation continuously without impairment to his health,” or like language. The question did not state the facts clearly, wai improperly framed, and the objection was properly sustained.

The sixth and seventh reasons are without merit, and require no comment. '

In this case, there appears ample evidence ■to support the verdict of the jury. There was testimony that the plaintiff had an active tuberculosis disease prior to January 1,1925, and that he was permanently and totally disabled when his contract of insurance was in force, to the extent that he could not engage in any gainful employment continuously without impairment to his health, and the case was fairly submitted. The reasons for new trial should be dismissed, and a new trial refused.

Now, May 20, 1931, rule for a new trial is. discharged.


author: FRANK J. COLEMAN, District Judge.

text:
    WOLF SAFETY LAMP CO. OF AMERICA v. UNITED STATES.
    District Court, S. D. New York.
    Oct. 14, 1930.
    Johnson & Shores, of New York City, for plaintiff.
    Charles H. Tuttle and Walter H. Sehulman, both of New York City, for the United States.
   FRANK J. COLEMAN, District Judge.

The sole question presented is whether plaintiff’s payment of part of its income and excess profits tax after the period of limitations can be recovered. Plaintiff filed its return for the year 1917 on March 15,1918, and in October, 1919, the government assessed an additional tax in the sum of $2,428.39 for the year 1917. On October 24, 1919, plaintiff filed a claim in abatement of the additional assessment, and thereafter all proceedings to collect it were held in abeyance. In October, 1922, the claim in abatement was partially allowed, and on April 6,1925, under threat of distraint the plaintiff paid the balance of the additional assessment, $1,793.61. On January 10, 1927, plaintiff filed a claim for a refund and, no action having been taken, brought the present suit on November 16, 1927.

At the time the $1,793.61 was paid under threat of distraint, the period of limitations had run and the government had no. power to collect it. The Revenue Act of 1928 provided :

“See. 607. Any tax (or any interest, penalty, additional amount, or addition to such tax) assessed or paid (whether before or after the enactment of this Act) after the expiration of the period of limitation properly applicable thereto shall be considered an overpayment and shall be credited or refunded to the taxpayer if claim therefor is filed within the period of limitation for filing such claim.” 26 USCA § 2607.
“See. 611. If any internal-revenue tax (or any interest, penalty, additional amount, or addition to such tax) was, within the period of limitation properly applicable thereto, assessed prior to June 2,1924, and if a claim in abatement was filed, with or without bond, and if the collection of any part thereof was stayed, then the payment of such part (made before or within one year after the enactment of this Act) shall not be considered as an overpayment under the provisions of section 607, relating to payments made after the expiration of the period of limitation on assessment and collection.” 26 USCA § 2611.

These sections have been held by the Circuit Court of Appeals of this circuit to bar a recovery of-an income tax paid after the expiration of the period of limitation and before the enactment of these sections, if the taxpayer had filed a claim in abatement. Regla Coal Co. v. Bowers (D. C.) 37 F.(2d) 373; Daniel Reeves v. Anderson (C. C. A.) 43 Ed 2d) 679, decided July 21, 1930.

There are two points raised by the plaintiff: (1) That the statute as construed by the Circuit Court of Appeals is unconstitutional; and (2) that even under that construction a recovery should be had in the present ease because of a difference in the facts. The first point need not be considered because it has been already passed on by the Circuit Court of Appeals.

As to the second point, the only difference in the facts which the plaintiff mentions is that in the present ease the claim in abatement as to the $1,793.61 was rejected by the department about five months before the period of limitation had expired; whereas, in the eases decided by the Circuit Court of Appeals the claims in abatement had not been rejected before the expiration of the period of limitation. This raises merely the question whether section 611 (26 USCA § 2611), in barring a recovery where the taxpayer had filed a claim in abatement, intended that the bar be effective only in case the claim in abatement was undecided at the termination of the period of limitation. There are no express words to that effect in the statute, and the plaintiff bases its argument on the proposition that the bar was intended only where the taxpayer had prevented the collection of the tax within the period of limitation. It is true the plaintiff’s claim of abatement did not prevent the collection of the tax during the last five months of the period- of limitation, but it had done so for the three years preceding. I believe the statute must be construed to mean that if during any part of the period of limitation, the Treasury Department was prevented from collecting the tax by a claim in abatement the taxpayer may not subsequently recover it. Suppose the claim in abatement had been rejected only a week or even a day before the expiration of the period of limitation, the department would be unable as a practical matter to collect the tax within the period, yet under the plaintiff’s construction a recovery of the tax paid could be had, which would eertainly be contrary to the intention of Congress.

The complaint is therefore dismissed. Settle findings on notice.


author: BLAND,-Associate Judge.

text:
    In re MURRAY.
    Patent Appeal No. 2730.
    Court of Customs and Patent Appeals.
    May 25, 1931.
    Milans & Milans, of Washington, D. C. (Usina & Rauber, of New York City, of counsel), 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, HATEIELD, GARRETT, and LENROOT, Associate* Judges.
   BLAND,-Associate Judge.

Appellant has appealed to this court from a decision of the Board of Appeals of the United States Patent Office, affirming the decision of the Examiner, refusing to allow all the claims dn his application, which are numbered 10 to 13, inclusive.

The alleged invention relates to heat-conducting tubes in steam boiler construction.

Claims 10 and 13 are illustrative, and follow:

“10. A heat-conducting unit for generating steam in boilers, said unit constituting a complete article of manufacture and comprising a tubular member with longitudinal flanges at opposite sides, said flanges having curved portions with their faces engaging the tube and making close contact across the entire width, so as to provide a broad path for the transmission of heat from the flange to the tube, said curved portion being welded to the tube and the outer portions of the flanges being free.”
“13. The combination of a plurality of separate heat-conducting units for generating steam in a boiler, each unit comprising members alongside of and parallel to each other with longitudinal flanges at its opposite sides, each flange having a portion overlapping and welded 'to its tube and having an outer portion which is free and which overlaps a free edge of a flange on the adjacent tube, the widths of the respective flanges and the extent of the overlap being such as to expose substantially equal widths of the two flanges between each two tubes.”

The claims were rejected upon the following references: Junkers, 1,125,113, January 19, 1915; White and Baker, British, 21,066 of 1892.

Appellant’s disclosure shows the ordinary boiler tube to which are welded flanges, the description of which in the claims is re1garded as sufficient for our purposes. The application and claims disclose two different structures which accomplish the same result, and which result appellant claims is useful and a great advancement in the art. In one structure more of the surface of the tube is covered by the welded flange than is covered in the other. Appellant’s counsel argues that the welding of the flat surface of the flange to the tube affords a better conducting agency for conducting the heat from the tube to the flanges than obtains where the projection or flange is part of the tube itself.

The Examiner cited five references. The Board of Appeals contented itself with relying upon two pf the references referred to by the Examiner.

Junkers is a patent for a boiler tube structure in which the flanges are welded to the pipe, the welded surface covering approximately one-half of the tube, substantially the same as is shown in Figure 6 of appellant’s application. The flanges, however, in both of appellant’s structures are not welded to each other, but overlap, which, according to appellant’s contention, takes care of the expansion caused by the heat. The flanges in Junkers are welded to each other.

White and Baker, a British patent, shows five different methods of boiler construction, and in Figure 3 shows the flanges, which are projections or extensions of the tube, placed in overlapping position without being welded.

In the two references patents are disclosed the two claimed features of appellant’s application. If appellant has made an invention, it rests in the combination of the two features taught by Junkers and White and Baker.

The Board of Appeals concluded that combining the two features, as appellant did, did not necessitate the exercise of inventive genius.

We agree with the conclusion, of the Board that what appellant did called for no more than mechanical skill, and that the useful results which may flow from such a combination would be obvious to one skilled in the art. It seems clear to us that no new and useful result, not inherent in the two structures, is obtained by the combination of the two old features.

The decision of the Board of Appeals is affirmed.

Affirmed.


author: GRAHAM, Presiding Judge.

text:
    In re MORTON.
    Patent Appeal No. 2742.
    Court of Customs and Patent Appeals.
    May 27, 1931.
    Martin T. Pisher and Robert H. Young, both of Washington, D. C., and Hoguet & Neary, of New York City (Ralph L. Chappell, of New York City, of counsel), 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, HATPIELD, GARRETT, and LENROOT, Associate Judges.
   GRAHAM, Presiding Judge.

The appellant filed an application in the United States Patent Office for a patent upon improvements in motor-driven cameras. All the claims were rejected by the Examiner as unpatentable over the prior art. The appellant appealed to the Board of Appeals of the United States Patent Office as to claims 1, 2, 3, 5, 9, 11, and 12. The Board of Appeals affirmed the decision of the Examiner as to all claims, except claim 5, which was allowed. Appeal to this court has been perfected as to the final rejection of claims 2, 3, 9, and 12 only. Claim 2 is typical and is as follows: “2. The combination of a camera, having devices operating cyclically, an electric driving motor, connecting means between the motor and said devices to drive the same and adapted to be automatically disconnected at the end of each cycle while the motor is still running, an energizing circuit for the motor, and automatic means for opening the motor circuit before each exposure and closing the circuit again after each exposure.”

The claims were rejected by the Board of Appeals upon the following references: Steffens, 429,705, June 10, 1890; Brauner et al., 1,253,205, January 15, 1918; Topliff et al., 1,268,805, June 4,1918; Laws, 1,293,-479, February 4, 1919; Beidler, 1,377,454, May 10, 1921; Dobbin, 1,448,526, March 13, 1923.

The device of appellant is an electric motor-driven camera, especially adapted for use in aircraft, and in which, by automatic mechanism, the motor is stopped while the exposure of the film is being made. This is accomplished by a mutilated driving gear which is driven by a pinion connected by a flexible shaft to the electric motor and storage battery which is provided. A segment of the mutilated gear is composed of a nonconducting material which revolves in a path lying under a brush in the motor circuit. This nonconducting segment breaks the electric circuit at the end of each cycle. There is also a hand operated mechanism, or trigger, which is used to open the shutter and expose the plate, after the release of which an auxiliary spring forces the cogs of the mutilated gear again past the nonconducting segment, closes the circuit, and starts the motor. Thereupon the mutilated gear again completes another cycle and advances the film into position for another exposure. This process is repeated indefinitely, according to the wish of the operator. The inventor also includes in his specification the idea of automatic mechanism for tripping the shutter, if this is necessary or desirable. A more detailed description of the device is not necessary for the purposes of this opinion.

It is contended by the appellant that the combination which he has produced effects a new and useful result not heretofore obtained in photography. He admits that the reference Laws teaches the art of a motor-driven camera with intermittent stops of the film, while exposure is being made. However, he contends that the motor of Laws, being wind driven, is not stopped while exposure is being made, and that the principal advantage of appellant’s device is that the motor is stopped while exposure is being made, thus insuring no' vibration which would interfere with the photographing process. . This idea, appellant says, is new, and, taken in connection with his employment of an electric motor, gives him the right to a patent upon the device he has perfected.

On consideration of the references, we are unable to see invention in this particular idea. The reference Beidler discloses an electrically-driven camera, and plainly teaches a method of stopping the motor while the exposure of the film is being made. In the specification we find this recital: * * * In the operation of the apparatus it is preferable that the motor be intermittently driven and that during certain periods, the film be allowed to remain at rest as for instance, when the film treating means is coupled with a film exposing means for it is then possible, while the film is at rest, to effect an exposure of the same to actinic light photographically.”

Further, in describing the operation of his mechanism, Beidler says: “ * * * Another conductor 165 leads from the motor to the source of electricity 166 and a conductor 167 leads from the source of- electricity to the switch terminal 168, so that by pressing the switch 162, the motor is energized and the stud 149 is moved from the nose of the cam 150 after whieh a normal current is established through the switch, and the motor will continue to run until the gear wheel 133 has traveled once around and the stud has contacted the cam and lifted the switch lever.”

Further analysis of the other references is not necessary.

In our opinion the appellant, in obtaining the allowance of claim 5 showing the specific structure disclosed by him, was given the benefit of all the patentable disclosures made by him in his application.

The decision of the Board of Appeals is affirmed.

Affirmed.


author: BLAND, Associate Judge.

text:
    In re VALENTINE.
    Patent Appeal No. 2737.
    Court of Customs and Patent Appeals.
    May 25, 1931.
    Henry Van Arsdale, of New York City, for appellant.
    T. A. Hostetler, of Washington, D. C., for the Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   BLAND, Associate Judge.

Appellant herein filed application in the' United States Patent Office for a patent for a surgical bandage, in whieh application, as amended, appellant made six claims, Nos. 20 and 22 of which are regarded as illustrative and follow:

“20. A surgical bandage comprising a strip of wo.ven gauze having pulpified edges.”
“22. A surgical bandage comprising a strip of surgical gauze having pulpified edges,, the pulpified material being immutably inter-blended where the threads crossed each other, and the intermediate material being friable.”

The examiner and the Board of Appeals rejected appellant's claims on a single reference: Toles, 745,028, November 24, 1903.

According to the specification in appellant’s application, his alleged invention consists of a surgical bandage in which the warp and weft threads at the margins or edges of the bandage have been mashed into a pulpified condition so that the threads are inter-blended to the extent that raveling does not take place unless the mashed portions of the-thread are separated from the other portion of the bandage.

We agree with the Board of Appeals that Toles completely anticipates appellant's alleged invention. Toles taught the same thing that is taught by appellant and further said that the edges could be additionally secured by adhesive material. Toles taught two methods of making a nonraveling bandage, one of which methods is identical with the teachings of appellant. Toles said: “ * * * e(jge 0f the bandage may be crushed, as indicated by 5 in Fig. 4, the pressure serving to cohere or cement the edge, sticking the threads firmly together.” And again: “In addition to crushing the edges of the bandage or like article the edges may be additionally secured by adhesive material.”

Appellant argues at great length that since Toles had the notion that using an adhesive material helped to cement the edges-of the bandage, his invention was not the same as that of appellant.

We cannot agree with this contention. One of the methods by whieh Toles proposed to bring about the nonraveling result was to “crush” the edges or margins of the bandage. Appellant “mashes” the edges. Appellant claims no particular way of mashing the edges and says it may be done in any suitable manner whieh would supply “suitable pressure.”

The decision of the Board of Appeals is affirmed.

Affirmed.


author: GARRETT, Associate Judge.

text:
    In re BERTRAM.
    Patent Appeal No. 2767.
    Court of Customs and Patent Appeals.
    May 27, 1931.
    Paul Carpenter, of Washington, D. C. (Brendan J. McCann, of Chicago, 111., of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C. {Howard S. Miller, of Washington, D. C., of counsel), for the Commissioner of Patents.
    Before GRAHAM, Presiding Judge*, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   GARRETT, Associate Judge.

Bertram has here appealed from a decision of the Board of Appeals of the United States Patent Office, affirming the decision of the Examiner, rejecting, as not defining invention over the prior art, twelve claims in an application for patent relating to improvements in “Reversing Gear Mechanism.” Claims 6 and 12 are quoted as illustrative;

“6. In a fluid operated reversing gear mechanism., in combination, two cylinders, a piston in each, said pistons being connected by a common piston rod, means comprising a single rotary valve for controlling the admission and exhaust of pressure from said cylinders, said means being arranged when in one position to be on lap wherein all fluid connections are closed and when moved therefrom to cause the admission of pressure to one of said cylinders and the exhaust of pressure from the other of said cylinders.”
“12. In combination, a cylinder and a piston operable therein, a motion imparting lever connected to be operated by said piston for imparting movement to an element to be moved, a valve for controlling flow of fluid under pressure to said cylinder, an operating lever mounted on the same axis as said motion imparting lever, and a third lever connected to said valve and pivoted at its medial portion on a part of said operating lever and having a sliding connection at one end with said motion imparting lever.”

References are cited as follows.* Cunningham, 721160, February 24, 1903; Ragonnet, 930225, August 3, 1909; Hunter, 1206707, November 28, 1916; Helmholtz et ah, 1208556, December 12, 1916; Stafford, 1230049, June 12, 1917; Imblum, 1258337, March 5, 1918.

The mechanism involved in appellant’s combination is somewhat complicated, and is difficult of explanation except by using the technical terms and element numbers. Broadly, it comprises a motor having two cylinders and two pistons connected by a pis - ton rod. Fluid, preferably compressed air, is admitted to the cylinders through a. valve and two passages; the valve being constructed so that, when fluid is admitted to either cylinder, it is exhausted from the other, and, when in neutral position, both of the passages, above referred to, are closed.

It appears to be designed primarily as a mechanism for use in reversing locomotive engines, hut the claims do not limit it to this particular use.

Every feature of claim 6 appears in the reference patent of Helmholtz and Bertram, except the single rotary valve, and this is present in Cunningham, Imblum, Hunter, Stafford and Ragonnet. Appellant has modified the valve, as shown by these references, so as to render it workable in the new relation arranged in his combination, but this modification, as he discloses it, cannot be held to be inventive as distinguished from mechanical skill.

In the brief of the Solicitor for the Patent Office*, the following is recited to show that claim 12 is directly readable upon Fig'. 6 of the Cunningham drawings;

“ ‘A cylinder’ of the claim is found at L, ‘a piston operable therein’ at M, £a motion imparting lever connected to be operated by said piston for imparting movement to an element to be moved’ is found at OO' (O and O' both being fixed to shaft F) while Q is *'a valve for controlling flow of fluid under pressure to said cylinder.’ At K k there is ‘an operating lever mounted on the same axis [the shaft F] as said motion imparting lever.’ S' is ‘a third lever connected to said valve’ by the rod T'. (R. p. 29, 1. 37-39.) This ‘third leveri S' is ‘pivoted at its medial portion on a part of the said operating lever’ since R. p. 29, 1. 39-40 mentions ‘lever S', which is pivoted between its ends on the crank-pin of the arm k of lever K.’ Finally, this ‘third leveri S' has ‘a sliding connection at one end with said motion imparting leveri 00', as the specification states (R. p. 29, 1. 40-43) that ‘The other end of the lever S' is forked and pivotally connected with the shorter arm of a lever 0' fixed on the shaft F.’ ”

Appellant traverses the Solicitor's contention that Cunningham discloses, in Fig. 6, “an operating lever mounted on the same axis as said motion imparting lever” in a manner which will enable tlose skilled in the art to modify Cunningham’s Fig. 3 so that it will meet this element of appellant’s claim 12, and says, in substance, that Cunningham does not show in the combination with an operating lever, a lever pivoted at its intermediate portion to one of the first-mentioned levers of the combination and slidably connected to the other of the levers.

The experts of the Patent Office have found against appellant on these contentions, and the demonstrations given in the arguments before us, wherein the claims were read upon the drawings and disclosures, while not easy to reproduce in writing so as to be intelligible without a minute explanation of the operation of the devices in all their parts, are convincing of the correctness of the holdings of the Examiner and the Board upon this point.

Appellant’s combination is one of old elements, each of which functions in its new relation as it did in its former relation. Such modifications as are made are believed to be matters of mechanical skill and not patentable; no new or unobvious result being obtained.

It being conceded that, with the exception of the “single rotary valve” in claim 6 already discussed, claim 12 may be taken as the measure of appellant’s invention, there is no necessity of discussing the minor distinctions in the other claims.

The decision of the Board of Appeals is affirmed.

Affirmed.


text:
    In re ESCHHOLZ.
    Patent Appeal No. 2583.
    Court of Customs and Patent Appeals.
    May 25, 1931.
    For- former appeal, see 46 F.(2d) 704.
    Wesley G. Carr, of East Pittsburgh, Pa. (Franklin E. Hardy and Jo Baily Brown, both of Pittsburgh, P'a., of counsel), 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.
   GARRETT, Associate Judge.

This ease was heard by us January 7, 1931, on appeal from the decision of the Board of Appeals of the United States Patet Office, and on February 2, 1931, our opinion (by the writer) was rendered, affirming the Board’s decision which denied all the appealed claims. 18 C. C. P. A.-, 46 F.(2d) 704.

Thereupon, on February 17, 1931, appellant filed petition for rehearing, which led us to again make a study of the case. The petition being granted, the ease was reargued, and, upon reconsidering it in the light of the petition and argument, taken together with the original record, we have concluded that our former decision should be modified. In that decision we quoted the four claims at issue, 12, 20, 21, and 23. It is therefore deemed sufficient to here quote claim 20:

“20. In combination, a tank, an insulating oil contained in the tank, electrical apparatus contained in the tank immersed in said oil, an atmosphere above the oil within the tank, a deoxidizing agent in contact with the atmosphere for coacting with oxygen in said atmosphere to produce a hygroscopic oxide, thus producing an inert and substantially dry atmosphere within said tank.”

The decision of the Board, as quoted in our former opinion, points out that a patent to Green, 1,326,049, of December 23, 1919, provides an “atmosphere of dehydrated nitrogen, * * * which may fluctuate between the free space and a gas holder,” but it was further said that, in Green, “no natural atmosphere is allowed to enter.” (Italics ours.)

It was further stated that patent to Hauser, No. 1,534,448, April 21, 1925, “shows a transformer in which natural atmosphere may enter during changes of temperature of the apparatus and means to absorb moisture from any air that enters,” while Blanchard, No. 96,871, November 16, 1869, and Wallace et al., No. 1,154,145, September 21, 1915, show “that as a chemical step the oxygen may be directly removed from air leaving pure nitrogen.” (Italics ours.)

A question is raised as to the validity of the Hauser patent as a reference here; it having been eopending with appellant’s application. This is an interesting issue, but, in view of our conclusion, it is not necessary to pass upon it in this case.

The disclosures of those patents are as stated, but we feel that probably in measuring appellant’s device the tribunals of the Patent Office, and we ourselves, failed 1» give the weight which should have been given to the fact that the particular problem which appellant sought to solve, and, apparently, did solve, by his combination, concerned hot oil in a closed tank and the matter of keeping oxygen therefrom and also eliminating moisture.

In claim 29 in particular appellant has as the last element mentioned:

“ * * * A deoxidizing agent in contact with the atmosphere for eoacting with oxygen in said atmosphere to produce a hygroscopic oxide, thus producing an inert and substantially dry atmosphere within • said tank.”

There is thus disclosed a single means for removing both oxygen and moisture which, as appellant states in his petition, is not suggested by the prior art.

In our former opinion, we took occasion to say that appellant had, apparently, wrought an improvement in the art, and upon careful reconsideration we have become convinced that he has created a combination which, as such, produces a new and useful result, and that its production involved invention. He is entitled under the well-settled rule of law to have the benefit of any genuine doubt which may exist.

We think, however, that claims 12, 29, and 21 contain all that is requisite to protect his invention.

Our former decision is modified to the extent that we hold claims 12, 29, and 21 to be patentable. The decision of the Board of Appeals is reversed as to these and reaffirmed as to claim 23.

Modified.


text:
    In re DANN.
    Patent Appeal No. 2706.
    Court of Customs and Patent Appeals.
    May 25, 1931.
    Wesley G. Carr, of East Pittsburgh, Pa. (Franklin E. Hardy, of Pittsburgh, Pa-., of counsel), 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.
   GARRETT, Associate Judge.

The Board of Appeals of the United States Patent Office affirmed a decision of the Examiner rejecting several claims of appellant, Dann, contained in an application for patent, filed December 23, 1922, for improvements in protective means for electrical apparatus such as transformers. From the decision of the Board appellant has prosecuted an appeal to this court.

Originally, nine claims were involved in the appeal. At the time of the argument of the ea-se, on April 7, 1931, there was pending before us a petition for rehearing in the ease of In re Eschholz, which ease had previously been deeided by us adversely to appellant therein, 46 F.(2d) 704. The petition for rehearing was later granted, and the Eschholz Case is being again decided concurrently herewith, our former decision being modified and certain claims being allowed, 49 F.(2d) 956.

Upon comparing the Esehholz Case and the instant case, it was found that they contained common subject-matter -in the claims, which, had they been regarded as patentable by the tribunals of the Patent Office', would have necessitated an interference or other appropriate proceeding there.

It developed that both the Esehholz and Dann applications have become the property of a common assignee, and the attorney for Dann, under these circumstances, on May 11, 1931, filed a memorandum in writing, which is made a part of the record in this case, withdrawing all the claims thought to conflict with the Eschholz claims. The claims withdrawn are Nos. 4, 5, 6, 7, 8, 11, and 12. So There remain to be considered by us only Nos. 1) and 10, which read as follows:

“9. An expansion device comprising a chamber having an opening for communication with an external container, means constituting a liquid sale for excluding air from said chamber, a container for a chemical substance in said chamber that' is removable, therefrom and a deoxidizing material in said last named container.
“10. An expansion device comprising a chamber having an opening for communication with an external container, means constituting a liquid seal for excluding air from said chamber, and a container for a chemical substance in said chamber, said chamber having an opening through which said container may be removed, and a removable cover member for said opening.”

The references cited as the ease 'originally came .before us, containing the nine claims, were: Hadley, 1013767, January 2, 1912; Hundt, 1100736, June 23, 1914; Green, 1326049, December 23,1919.

In the memorandum withdrawing the stated claims, counsel for appellant, who' was also counsel for Esehholz, stated:

“The Esehholz invention is primary in character, the Dann invention being merely a specific mechanical arrangement for utilizing the Esehholz invention. The Dann improvement consisted in placing the deoxidizing element of the Esehholz invention in an outside chamber 9, connected to the gas space in the transformer tank by a pipe 8, and providing a door 12 by which the inside of the chamber 9 for containing the deoxidizer, may be readily accessible for observation and replenishment of the deoxidizing element. The chamber 9 in the Dann arrangement is brought down to a point where it can be reached and observed without getting on top of the transformer tank, as required in the embodiment shown in the Esehholz Case. * 0 *
“No patent can be issued to Dann covering anything patented in the Esehholz Case. This was conceded in oral argument, and the foregoing withdrawal of appellant’s broad claims reduces the Dann application to one relating only to a modified mechanical arrangement for applying the Esehholz primary invention.”

It does not seem to us that in view of the references, there is anything inventive in arranging a chamber on the outside for containing the deoxidizing agent or in putting a door therein for rendering the deoxidizer readily accessible for observation and replenishment, nor is it patentable, after placing the chamber on the outside, to bring it “down to a point where it can be réached and observed without getting on top of the transformer tank.” That is a matter of convenience which it seems would readily occur to one skilled in avoiding climbing ladders. Neither does it appear inventive to' render the carrier for the deoxidizing substance removable, nor to provide an opening and removable cover therefor for convenience in removing the deoxidizing material. Since this material must be changed at times, an opening for taking it out is a manifest necessity. The liquid seal is old in the art, and there is nothing patentable in applying it to the separate deoxidizing chamber.

The decision of the Board of Appeals is affirmed.

Affirmed.


author: BLAND, Associate Judge. HATEIELD, Associate Judge, GARRETT, Associate Judge

text:
    PROCTOR & GAMBLE CO. v. J. L. PRESCOTT CO.
    Patent Appeal No. 2764.
    Court of Customs and Patent Appeals.
    May 27, 1931.
    Allen & Allen, of Cincinnati, Ohio (Paul Finekel, of Columbus, Ohio, of counsel), for appellant.
    Joshua R. H. Potts, of Chicago, 111. (T. Bertram Humphries, of Philadelphia, Pa., of counsel), for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT,, and LENROOT, Associate Judges.
   BLAND, Associate Judge.

From a decision of the Commissioner of Patents, affirming the decision of the Examiner of Interferences, dismissing appellant’s notice of opposition, and adjudging that the appellee was entitled to the registration of its trade-mark, the appellant has appealed to this court.

The opposer, appellant, based its opposition upon the use, by it and its predecessors, of its registered trade-mark “Oxydol,” since June 10, 1914, as a trade-mark on soap powder.

The applicant, appellee, seeks to register “Oxol,” which is used as a trade-mark on a liquid chlorine soliltion, intended for use as a disinfectant, germicide, deodorant, sterilizer, cleaner, and bleacher.

Opposer’s merchandise, “soap powder,” is in powdered form and adapted for various cleaning purposes, such as laundry, kitchen, and other household uses. It is put up in rectangular paper boxes, about eight inches high and five inches wide, hy two inches thick, and has displayed prominently thereon the word “Oxydol” and the representation of a girl. On opposer’s package it is stated: “It is neither a Soap Powder nor a Powdered Soap in the-understanding of those terms, but it is a complete detergent that may be used for any purpose for which Soap or* Soap Powder is used.”

, The applicant’s mark consists of the word “Oxol” in large letters upon a frame or scroll, together with the representation of a girl holding a cloth. The applicant, on its container, says that there are 999 uses for “Oxol” in every home, and that among such usas are those of bleaching clothes, removing stains, and cleaning household articles (such as bathtubs, sinks, wash-basins, linoleum, drain boards, and so forth), and that it is used as a sterilizer. On the package it is recommended for cutting grease, for whitening clothes, and for deodorizing. “Oxol” is put up in bottles about eight inches high by three inches in diameter.

The record shows that, during the year prior to the date of applicant’s filing its application, the opposer spent $600,000 in advertising its product “Oxydol,” and that the applicant, the J. L. Prescott Company, was and is a large concern manufacturing a great number of household products; that shortly before it filed its application it decided to extend its line to include the article with which we are herein concerned.

As we see it, the record in this ease presents but two questions: First, are the goods of the respective parties of the same descriptive properties? Second, if the goods are of' the same descriptive properties, are the marks so similar as to be likely to bring about confusion, under the circumstances shown t

The record shows that the goods are used, in part, for identical purposes. They are both common household articles, sold at low prices and purchased by customers who ordinarily, before purchasing same, would make little, if any, inquiry as to their origin.

We think the goods are of the same class- and are of the same descriptive properties.

Applicant in adopting its proposed trademark has chosen one beginning with “Ox” and ending with “ol.” The word embodies all of the letters of appellant’s trade-mark “Oxydol” except the letters “y” and “d.” The sound of the respective words is quite similar.

The goods, being to some extent dissimilar in appearance and use, and the marks not being identical, the Examiner of Interferences and the Commissioner of Patents concluded that there was no likelihood of confusion. In a ease of this kind this question, of course, is largely a matter of opinion.

We are of the opinion that there is a strong probability that confusion as to origin of the goods would result to the purchasing public in event both marks were registered, and were used in the manner shown in the record. At least there is some substantial doubt on the question, and, under the familiar rule, such doubt should be resolved against the newcomer, inasmuch as he has a wide field to select from in choosing his trademark.

It was admitted in argument before this court that the applicant deliberately selected the mark “Oxol” after considering the legal effect of doing so, in view of the registered trade-mark “Oxydol,” and, 'while applicant does not admit that it selected “Oxol” with the purpose of profiting by the advertisement and good will of the “Oxydol” trademark, there is no attempt at explanation as to why the word “Oxol” was adopted, and it seems fair to infer that, owing to the peculiar character of the two arbitrary marks, and in the absence of any explanation whatever, applicant sought to profit by the confusion that would result.

We think this case is controlled by Lever Bros. Co. v. Riodela Chemical Co., 41 F. (2d) 408, 411, 17 C. C. P. A. 1272, in which ease the facts were quite similar to those at bar. There the court said:

“So here, why. did appellee select the word ‘Tex’ when there was a multitude of words that were short and easy to- remember, bearing no similarity to the word ‘Lux,’ any one of which might have been adopted by appellee without any probability of causing confusion or mistake in the piind of the public? If its sole purpose in adopting a trademark was to indicate origin of its own goods, we would expect it to select a mark having no similarity to any other used upon similar goods.
“Of course, if confusion or mistake is not likely to result from the use of the two marks, the' motive of the later applicant in adopting its mark cannot affect its right to registration ; but if, in the adoption and use of the mark, there be a purpose of confusing the mind of the public as to the origin- of the goods to which it is applied, we have a right, in determining the question of likelihood of confusion or mistake, to consider the motive in adopting the mark as indicating an opinion, upon the part of one vitally interested, that confusion or mistake would likely result from use of the mark. After all, the determination of the question of likelihood of confusion or mistake in the use of trade-marks must,' as a general rule, be a matter of opinion, and not the result of testimony produced as to the existence or absence of such confusion. Therefore the tribunals of the Patent Office, and this court as a reviewing body, may,'in eases where one adopts and uses a mark with the motive of confusing the mind of the public, consider that motive as one of the factors in determining the question of whether use of such mark is likely to cause confusion or mistake in the mind of the public.”

The decision of the Commissioner of Patents is reversed.

Reversed.

HATEIELD, Associate Judge,

concurs in the conclusion.

GARRETT, Associate Judge

(specially concurring).

While concurring in the ponelusion in this case, I do so simply upon the ground that the goods are of the same descriptive properties, and that the marks bear such a resemblance to each other as that registration is forbidden under a proper construction of the TradeMark Registration Act (15 USCA §§ 81-109).

I do not fully understand the statement in the majority opinion that, “in a case of this kind this question [likelihood of confusion], of course, is largely a matter of opinion.” Ample -authority to establish the proper legal rule by which to test the issue is to be found in decisions of this and other courts. Goodrich Co. v. Hockmeyer, 40 F.(2d) 99, 17 C. C. P. A. 1068; Cheek-Neal Coffee Co. v. Hal Dick Mfg. Co., 40 F.(2d) 106, 17 C. C. P. A. 1103; California Packing Corporation v. Tillman & Bendel, Inc., 40 F.(2d) 108, 17 C. C. P. A. 1048; Sun-Maid Raisin Growers of California v. American Grocer Co., 40 F.(2d) 116, 17 C. C. P. A. 1034, Heekin Co. v. Lawrenceburg Roller Mills Co., 40 F.(2d) 119, 17 C. C. P. A. 1093; Malone v. Horowitz, 41 F.(2d) 414, 17 C. C. P. A. 1252; Fishbeck Soap Co. v. Kleeno Manufacturing Co., 44 App. D. C. 6, and eases cited in these several decisions.

I find nothing in the record which leads me to feel justified in joining in the inference that “applicant sought to profit by the confusion that would result.”

The record discloses that, when appelleeapplicant had tentatively decided to adopt “Oxol” for the particular commodity involved, it, as is common in such cases, referred the matter to its attorney for a search in the Trade-Mark Division of the Patent Office to ascertain whether there were any registered marks with which that mark might conflict. In the course of this search the attorney came upon appellant-opposer’s mark “Oxydol,” and another mark of another party — “Oxo.” The attorney seems to have advised that “Oxo” might conflict and appellee proceeded to acquire that mark by purchase from its owner. The attorney advised that, in his opinion, there would be no conflict with “Oxydol” which would prevent appellee’s registration of “Oxol.”

As the Registration Law was then being construed, such advice was not surprising, and I am unwilling to read into this transaction any sinister purpose on the part of appellee. That counsel and appellee had grounds for believing that no legal conflict existed is certainly strongly evidenced by the fact that both tribunals of the Patent Office concurred in granting the registration which we are now denying under what we conceive to be the proper construction of the statute.

It is thought that, if we adopt a policy of determining cases largely as a “matter of opinion,” rather than by fixed legal rule, attorneys will find it extremely difficult to advise clients in the future. Individual’s opinions may vary or change as they have in the past.

In a specially Concurring opinion in Lever Bros. Co. v. Riodela Chemical Co., 41 P. (2d) 408, 17 C. C. P. A. 1272 — the only ease cited by the majority in their decision in the instant case — I endeavored to point out what seems to me to be the legal unsoundness, in construing the registration statute, of reasoning from effect to cause, by inferring a motive on the part of an applicant and then permitting that inferred motive to constitute a factor in determining the only question with which the court is concerned' — confusion or likelihood of confusion. Whatever value that reasoning may have in an unfair trade case, it has little or none m a registration proceeding.

In so far as I can determine from the record, the trade practices of appellee are quite as ethical as are those of appellant, and I see no occasion for reflecting upon either.


author: LENROOT, Associate Judge.

text:
    In re NICOLSON.
    Patent Appeal No. 2761.
    Court of Customs and Patent Appeals.
    May 27, 1931.
    J. G. Roberts, of New York City (G. T. Morris, of New.York City, of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for the 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 a decision of the examiner, rejecting claims 17 and 18 of appellant’s application, filed on January 8,1924, which claims were copied from patent No. 1,572,-773, issued to one Crossley on February 9, 1926. Said claims were filed by appellant on March 4, 1927, and the purpose of copying said claims from the Crossley patent was to secure an interference between appellant’s application and said patent.

The claims here in issue were rejected upon the ground that they are not supported by appellant’s disclosure. The appealed claims read as follow's:

“17. A piezo-electric crystal apparatus comprising in combination a mounting, a piezo-eleetrio crystal holder arranged to detachably engage said mounting, said piezoelectric crystal holder having means for hermetically sealing a piezo-electric crystal therein and means whereby said piezo-electric crystal holder may be mechanically supported by said mounting, and an -electrical connection established with said piezo-eleetric crystal.
“18. A piezo-electric crystal apparatus comprising in combination a supporting member, a piezo-electric crystal holder carried by said supporting member, a piezo-electric crystal disposed within said holder and electrically connected with opposite ends of said holder, and means whereby said piezoelectric crystal may be electrically connected in a circuit established through contacts on said supporting member when said holder is engaged with said supporting member.”

With respect to claim 17, it is conceded that all of its elements are disclosed in appellant’s specification except that portion of said claim reading “and means whereby said piezo-electric crystal holder may be mechanically supported by said mounting, and an electrical connection established with said piezo-eleetrio crystal.”

Appellant contends that the foregoing language should be so construed that the word “means” shall relate only to the support of the piezo-electric crystal holder, and that the words “an electrical connection established with said piezo-electric crystal” should be regarded as a separate element. He contends that, so construed, this part of the claim reads upon appellant’s disclosure. In 'support of this contention, appellant relies largely upon the punctuation of the language of the claim and especially the comma after the word “mounting.” Upon this point the Board of Appeals said: “ * * * The appellant attempts to read the term means as covering only the support of the holder 75 of his Fig. 4 by the mounting 71, 72, 73 and then read the ‘electrical connection established with'said piezo-electric crystal’ as a separate element. He contends that this is the proper reading by reason of the cdmma after ‘mounting.’ In our opinion it is clear that it was the intention of Crossley in drawing this claim that the word ‘established’ should convey the meaning that it was by the mounting or placing of the holder upon the mounting that the eireuit was established and that said circuit must necessarily be through the mounting. The claim cannot be read in this way on appellant’s construction. He also attempts to apply the claim by considering the word ‘means’ as plural but this reading would be open to the same objection.”

We think the Board of Appeals has correctly construed claim 17.

While appellant invokes the rule that a claim should be construed as broadly as its terminology will reasonably permit, we do not think it should apply to a case where there is such manifest difference in structures and specifications as appears to exist in the instant case. Slattery v. Lamer, 36 F.(2d) 298,17 C. C. P. A. 725.

Furthermore, the rule is well established that where the terms of a count are ambigur bus or susceptible of more than one construction, and the count is copied from the claim of a patent, the one copying the claim is bound by the meaning intended by the patentee, as shown by his disclosure. Tracy v. Leslie, 14 App. D. C. 126; Podlesak v. McInnerney, 26 App. D. C. 399.

In the case of Brogden v. Slater, 40 F. (2) 988, 989, 17 C. C. P. A. 1240, this court said: “ * * * it is well established that the meaning given to the counts, if there be any ambiguity, must be that disclosed in the specification of the party first to make the claim.”

We think this rule is applicable here, and We are satisfied, from an examination of the Crossley disclosure, that he did not intend in claim 3 of his patent, from which claim 17 of appellant was copied, that the last clause of the claim should be regarded as a separate element, and his disclosure does not show it to be such.

With regard to count 18, the Board of Appeals said: “Appellant attempts to read claim 18 on his Fig. 4 by considering the casing 75 as the supporting member and the cage inside the casing as the holder. These are not the members corresponding to those of the Crossley patent and when so read, there is no crystal which is electrically connected with opposite ends of the holder. Each crystal is connected to one end of the holder. Furthermore, there is an implication in the claim that the circuit is established when the holder is engaged with the supporting member and in applicant’s construction the eireuit exists at all times. If the claim be read on Fig. 2 the plates or electrodes, 42, 43 and connecting bolts 46 would be the holder and there would be no support unless it be the chain 48 which has no contacts and through which no current passes.”

We have carefully considered appellant’s contentions that the board erred in its conclusion as to claim 18, but we are of opinion that claim 18 does not read upon appellant’s disclosure.

The decision of the Board of Appeals is affirmed.

Affirmed.


author: GRAHAM, Presiding Judge. BLAND, J.

text:
    BRYDLE v. HONIGBAUM.
    Patent Appeal No. 2750.
    Court of Customs and Patent Appeals.
    June 5, 1930.
    Charles M. Thomas and Francis D. Thomas, both of Washington, D. C. (Arlon V. Cushman, of Washington, D. C., of counsel), for appellant.
    Cornelius Zabriskie, of New York City, for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges. .
   GRAHAM, Presiding Judge.

The ■ appellant, Fenton R. Brydle, filed an application for a patent upon improvements in shingles in the United States Patent Office on October 21, 1924. The appellee Harry H. Honigbaum filed a similar application on April 27, 1923. An interference was declared by the Patent Office between these applications, the counts of the interference being three. Counts 1 and 2 are illustrative, and are as follows:

“Count 1: A flexible shingle of composition roofing material comprising a substantially rectangular body, flat throughout its entire extent and adapted to be laid with one comer to the weather and provided at the apex of said weather comer with wings extending laterally in opposite directions beyond the contiguous lateral converging edges of the body, and lying in the same plane as the remainder of the shingle, said wings being of sufficient transverse length to extend in flat position beneath portions of the bodies of two juxtaposed underlying shingles of the preceding shingle course to hold down the weather comer of the shingle.
“Count 2: A flexible shingle of composition roofing material comprising a substantially rectangular body, flat throughout its entire extent and adapted to be laid with one comer to the weather and provided at the apex of said weather comer with wings extending laterally in opposite directions beyond the contiguous lateral converging edges of the body and lying in the same plane as the remainder of the shingle, with the upper edges of said wings sloping in a downward direction toward the body of the shingle, said wings being of sufficient transverse length to extend in flat position beneath portions of the bodies of two juxtaposed underlying shingles of the preceding shingle course to hold down the weather comer of the shingle.”

Both parties took testimony. In Brydle’s amended preliminary statement, he alleges he conceived the invention of the counts of the interference between the dates of July 3, 1922, and July 12, 1922, disclosed the invention to others on or before October 10th of the same year, and reduced the same to practice between October 1, 1922, and December 20, 1922, by the making at that time of a panel composed of the shingles in question.

A motion was afterwards made by Brydle to amend his preliminary statement to conform with facts which he alleged had been proven by the record, and this motion was disallowed by the Examiner of Interferences, and, on appeal, by the Board of Appeals. In this court, however, counsel for the appellant waives this motion, and elects to stand upon his amended preliminary statement as hereinbefore set out.

Honigbaum alleges in his preliminary statement that he conceived the invention in question on or about July 6, 1922, and reduced the same to practice by the making of a full-sized shingle on the same date, since which date he has continued the manufacture of the same.

The Examiner of Interferences found that the party Brydle, in 1922, was president of the Tilo Roofing Company, and during that year took up the use of a new shingle known as the Arro-Loek, which was a square shingle constructed with slits near one comer, designed to interlock with adjoining shingles; that on observing the workmen opening these shingles Brydle conceived the idea that a notch would.be much more satisfactory in the shingle, than the slits in question, and ■that thereupon he took some rectangular shingles in whieh he made notches and with whieh he then covered a panel board whieh was thereupon fastened upon the outside of the warehouse in Brydle’s establishment, in a sloping position similar to a roof. The Examiner of Interferences held that the construction of this panel board did not amount to an actual reduction to practice, referring, in so doing, to Crabbs v. Wardell, 19 F.(2d) 715, 57 App. D. C. 241. This holding referred to counts 1 and 3 of the interference. As to count 2, limited to wings having the upper edges sloping toward the body of the shingle, the Examiner found that Brydle did not claim to have done anything more toward the reduction to. practice thereof than the making of one shingle prior to-1925. He also held that Brydle had no other reduction to practice prior to his filing date than the panel board in question. He further held that the delay of a year and a half in the filing of Brydle’s application after Honigbaum had filed is fatal to Brydle’á claims of priority, and, arguing therefrom, awarded Honigbaum priority. ’ ■

An incidental question also arose on a motion by Brydle to reopen for leave to take further testimony, to wit: To offer in evidence a letter from the files of Mr. Brownrigg, former attorney for Brydle in this patent matter. The motion to reopen was denied.

The Board of Appeals agreed with the decision of the Examiner of Interferences as to all of his conclusions, except as to the finding that the making of Brydle’s panel board was not a reduction to practice. The Board held as to this matter that, inasmuch as Brydle and others had been using' the Arro-Lock shingles, whieh were well known to the trade, ‘and had been tested under aetual practice, that it was not essential that the new shingle, which simply substituted a notch for the former slit, should be subjected to weather conditions in order to reduce the same to practice; that it was sufficient if the shingles were laid in such a way as to demonstrate that they were practicable shingles. Irrespective of this holding, however, the Board of Appeals held that Brydle had shown no right to file an amended preliminary statement, and that priority was properly awarded to Honigbaum, the senior party.

The facts in this record show an unusual condition in interference eases. Brydle testified that on July 3, 1922, he conceived the idea of an asbestos shingle with lateral notches in it, so that a shingle, for example, sixteen inches square, might be used as a sixteen-inch shingle, without waste, by simply cutting notches in its sides. He produced testimony to show that in July, 1922, he made a panel board of such shingles, whieh is in evidence, and marked Exhibit 7. The question as to whether this panel board was a reduction to practice, or not is warmly contested. A determination of this point, however, is not essential to the conclusion whieh we have arrived at in the matter. The one essential fact is that Brydle claims, in his testimony, to have conceived and reduced to practice a notched shingle.

On the other hand, Honigbaum claims to have conceived the idea of a shingle on July 6, 1922, and, on the same day, reduced the invention to practice. But Honigbaum’s shingle was not notched. It had tabs extending from the weather exposed comer beyond the shingle proper. He has never claimed to have invented a notched shingle.

The testimony shows that Honigbaum disclosed his tabbed shingle to Brydle in the spring of 1923, and that during that summer and fall Brydle negotiated for a license to manufacture the same. When asked for an explanation as to why he did this, Brydle testified that he did not consider himself the inventor of a tabbed shingle, the lateral parts or wings of which extended beyond the entire portion of the body of the shingle. To quote:

“X-Q. 85. Do you consider yourself the inventor of such a shingle at any time? A. Not where the tab end of the shingle extends beyond the entire portion of the body of the shingle, no.”

He reiterated this by other answers. This testimony was given June 6, 1928, almost four years after his application in interference here was filed.

Notwithstanding this, however, we find Brydle’s application containing a specification whieh reads upon the Honigbaum tabbed shingle, and drawings which illustrate it. The claims attached to said application, which Honigbaum afterward, for the purposes of this interference, copied are broad enough to include the notched shingle whieh Brydle says he invented and the tabbed shingle, which he says he did not invent.

It is obvious, therefore, that, if this interference be permitted to proceed and priority be awarded to Honigbaum, Brydle will have had no day in court on the question of priority of conception and invention of the notched shingle. On the other hand, if priority be awarded to Brydle, Honigbaum will have had no day in court upon the issue of priority of his tabbed shingle.

In such case, to prevent a miscarriage of justice, it is apparent that the matter should go back to the Patent Office for further proceedings. The decision of the Board- of Appeals is therefore reversed, and the cause is remanded to the Patent Office for such proceedings as may be deemed necessary and proper in the premises.

Reversed and remanded.

BLAND, J.

(specially concurring).

I agree with everything said in the opinion, except I feel certain that Brydle’s Exhibit 7 was a complete reduction to practice of the “notched” shingle; otherwise there would be no necessity for a remand.


text:
    In re SUN OIL CO.
    Patent Appeal No. 2743.
    Court of Customs and Patent Appeals.
    May 27, 1931.
    Busser & Harding of Philadelphia, Pa. (Prank S. Busser and George J. Harding, both of Philadelphia, Pa., of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C., for the Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   BLAND, Associate Judge.

The Commissioner of Patents affirmed the decision of the examiner of interferences in refusing to register appellant’s proposed trade-mark whieh consists of a blue color imparted to gasoline., Appellant has appealed to this court from the decision of the commissioner.

In appellant’s application for registration he sets out the following: “The mark consists of a blue color imparted to the gasoline. * * * The trade-mark is applied to the gasoline by adding a very small proportion of blue coloring matter to the gasoline before it is placed into containers. * * * ”

The refusal to register on the part .of the Patent Office tribunals was upon the ground chiefly that one cannot have a trademark monopoly of a mark whieh consists of the color of the article alone.

The contention made by appellant in this, case is substantially the contention made by the appellant in Re General Petroleum Corporation of California, 49 F.(2d) 966, 18 C.: C. P. A.-decided concurrently herewith, in whieh decision this court went fully into the question of the registrability of a trade-mark identical, except as to color, with the one proposed herein. In that, ease the color im-. parted to the gasoline involved was violet.' There we cited the pertinent authorities and discussed the law somewhat at length and our decision affirmed that of the commissioner which refused registration. Nothing that we said in that case need be repeated here and' the reasoning and cited authorities in that case are controlling in this one.

Appellant in the ease at bar has argued with great earnestness that the commissioner’s holding that the blue color imparted to the gasoline could not function as a trademark was contrary to the express provision of section 5 of the Trade-Mark Act of February 20, 1905, as amended (15 USCA § 85),' whieh in part reads as follows:

“Sec. 5. t That no mark by whieh the' goods of the owner of the mark may be dis-: tinguished from other goods of the same class shall be refused registration as a trade-mark on account of the nature of such mark unless • such mark—
“(a) Consists of or comprises immoral or scandalous matter.
“(b) Consists of or comprises the flag or coat of arms or other insignia of the United States or any simulation thereof, or of any State or municipality or of any foreign nation, or of any design or picture that has been or may hereafter be adopted by any fraternal society as its emblem, or of any name, distinguishing mark, character, emblem, colors, flag, or banner adopted by any institution,- organization, club, or society which'.was incorporated in any State in the United States prior to the date of the adoption and use by the applicant: Provided, That said name, distinguishing mark, character, emblem, colors, flag, or banner was adopted and publicly used by said institution, organization, club, or society prior to the daté of adoption and use by the applicant. ' *

Following the above-quoted provision, there are, in the same section of the statute, a number of provisos specifying certain kinds of xharks which may not be registered, most of which subject-matter has no application, to the issue at bar. We think the following proviso, which is found in section 5, is pertinent to the issue at bar and must be considered with the first quoted part of section 5: “ * * * Provided, That no mark which consists merely in the name of an individual, firm, corporation, or association not written, printed, impressed, or woven in some particular or distinctive manner, or in association with a portrait of the individual, or merely in words or devices which are descriptive of the goods with which they are used, or of the character or quality of such goods, or merely a geographical name or term, shall be registered under the terms of this Act.” [Italics except first word ours.]

In Beckwith v. Commissioner of Patents, 252 U. S. 538, 40 S. Ct. 414, 416; 64 L. Ed. 705, the Supreme Court of the United States •seemed to give equal force to that portion of the paragraph requiring registration, and the provision providing against registration in ■specific eases. The following language was used: “ * * * In this connection it must be noted that the requirement of the statute that no trade-mark shall be refused registration, except in designated cases, is just as impérative as the prohibition of the proviso against registration in eases specified.”

Appellant emphasizes the fact that the ingredient in the gasoline which gives it its blue character adds nothing to its quality except color and is added only for trade-mark purposes. Appellant concedes that its registration would insure to it a prima facie monopoly of blue gasoline, but states that if any one else desired to use blue gasoline, which might happen to be blue on account of a necessary ingredient therein contained, he (the newcomer) would be required to so differentiate his merchandise (in some manner not disclosed by appellant), as to prevent confusion 'with appellant’s proposed blue gasoline trade-mark.

We cannot -think manufacture and commerce should be so hampered by such a construction of the law. With parity of reasoning it might also be argued that the taste and odor of certain articles might be properly and successfully used to distinguish its goods from the goods of another and that, therefore, such taste or odor should be regarded as the proper subject-matter for trade-marks.

The mark in this instance, we think, consists merely in a device which is descriptive of the goods with which it is used. Nothing could be more descriptive of an article of manufacture than the article itself. The proposed mark consists of the merchandise itself, and under the authorities cited in In re General Petroleum Corporation of California, supra, such a mark is not entitled to registration.

The decision of the Commissioner of Patents is affirmed.

Affirmed.


text:
    In re GENERAL PETROLEUM CORPORATION OF CALIFORNIA.
    Patent Appeal No. 2755.
    Court of Customs and Patent Appeals.
    May 27, 1931.

      Wm. Wallace White and Wallace White, both of New York City (Joseph W. Milbura, of Washington, D. C., of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C., for the Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   GARRETT, Associate Judge.

Appellant is, and for some time has been, engaged in the business of selling gasoline sold in bulk. In June, 1928, it began to introduce into its product a sufficient quantity of violet coloring matter to give a violet hue to the entire mass of gasoline so treated. The claim is that the introduction of this coloring matter was and is for no functional purpose, but solely for the purpose of distinguishing appellant’s gasoline from the gasoline marketed by other dealers, thus indicating origin. This is claimed to be a trademark use of the violet color, and in July, 1928, appellant filed, in the United States Patent Office, application for the registration of the violet color for use in gasoline as a trade-mark for such gasoline, under the Trade-Mark Registration Act of February 20, 1905 (15 USCA §§ 81-109).

In the application it was stated: “The-trade mark is applied to the goods by the addition of a violet coloring matter which permeates the goods.”

- Registration was refused by the examiner on the ground, that,, as a general proposition of law, color alone cannot constitute a trademark. Upon appeal the decision on this ground was affirmed by the Commissioner of Patents, and the instant appeal to this court was then taken.

There are several assignments of error, but all of these may be treated as compre-; hended in No. 9 thereof, reading:. “The Commissioner erred in rejecting the appli-i cation on account of the nature of the mark.”

Appellant’s drawing discloses the figure of a conventional stand, such as is used at gasoline filling stations, showing the usual transparent receptacle at the top from which gasoline flows by force of gravity. By means of diagonal lines, drawn on the representation of the transparent device, indication is given that the gasoline within the receptacle is colored, and on one side of the receptacle, with an indicating arrow, the word “violet” appears. Nothing is claimed, however, for the figure of the stand nor for the word, the latter being inserted merely to explain what the color is. The claim is confined entirely to the color itself, independent of any figure, word, device, symbol, or design.

In the opinion of the commissioner it is stated: “In the brief the appellant proposes to amend the application to state 'the mark consists of violet Coloring matter intimately mixed or dissolved in the gasoline.’ ”

There does not appear to have been any formal ruling upon this amendment, but it. seems fairly inferable that the commissioner-treated it as being allowed and we are content so to treat it.

We are not persuaded that the concurring decisions , of the tribunals of the Patent Office are erroneous. The issue presented is somewhat novel, so far as the eases that have reached this court are concerned; but persuasive authority for their decisions herein is to be found in numerous decisions of other courts.

Independent of the authorities, in the absence of any controlling, adjudications to-the contrary, it seems to us that, in all good reason, it must be held that the trade-mark registration statute did not contemplate color alone, as appellant here applies it, as a mark to be registered as a trade-mark.

Appellant has quite earnestly stressed the statement of the statute: “That no mark by which the goods of the owner of the mark may be distinguished from other goods of the same class be refused registration as a trade mark on account of the nature of such mark. * * * ”

We fully appreciate the binding force of the quoted language, but before it can be applied the matter which it is proposed to register must be a mark, in a trade-mark sense. The word “nature” in the statute must be construed with that understanding of the meaning of the word “mark.”

Trade-mark ownership carries with it a monopoly upon the mark, but does not, of itself, carry with it the right of a monopoly upon the product or goods to which the mark is applied. If the mere color of violet applied to gasoline in the manner described, so as to render the entire volume of the gasoline violet-hued, could be treated as a trademark, it would result that appellant would secure a potential monopoly for an indefinite period, .not simply upon the mark, but upon violet-colored gasoline itself. Such a mark we think would not be a good trade-mark at common law, and, repeatedly, we have held, following numerous authorities, that, since the registration statute created no new rights of trade-mark ownership, it did not contemplate the registration of marks incapable of common-law ownership. B. F. Goodrich Co. v. Kenilworth Mfg. Co., 40 F.(2d) 121, 17 C. C. P. A. 1105; Sun-Maid Raisin Growers of California v. American Grocer Co., 40 F.(2d) 116, 17 C. C. P. A. 1034; American Steel Foundries v. Robertson, 269 U. S. 372, 46 S. Ct. 160, 70 L. Ed. 317; In re Bonide Chemical Co., 46 F.(2d) 705, 18 C. C. P. A.-, with their respective citations.

The authorities cited in the decisions of the Patent Office tribunals and in the brief of the solicitor for the patent office are very persuasive, if not absolutely controlling. A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U. S. 166, 26 S. Ct. 425, 50 L. Ed. 710; Ex parte Pearson Tobacco Co., 1898 C. D. 643, 85 O. G. 287; Diamond Match Co. v. Saginaw Match Co. (C. C. A.) 142 F. 727, 729; Newcomer & Lewis v. Scriven Co. (C. C. A.) 168 F. 621; Taylor v. Bostick (C. C. A.) 299 F. 232; Coca-Cola Co. v. Williamsburgh Stopper Co. et al. and Coca-Cola Co. v. Whittemann et al., 2 T. M. Rep. 234; Goodyear Tire Co. v. Thomas E. Robertson, Commissioner of Patents (C. C. A.) 25 F.(2d) 833; Ex parte Landreth, 1885 C. D. 90, 31 O. G. 1441.

All these cases sustain the general principle very well stated in the Diamond Match Co. Case, supra: “Sometimes a color, taken in connection with other characteristics, may serve to distinguish one’s goods, and thus be protected by the courts, * * * but, as a rule, a color cannot be monopolized to distinguish a product.”

Appellant’s fifth assignment of error is as follows: “The Commissioner erred in disregarding and refusing entirely to consider the cited decision of the Texas Court of Appeals holding that color as a means of identification in the manufacture and sale of goods is governed by the same rule as the use of geographical names in the same connection.”

As phrased, this assignment of error need not necessarily be given any particular consideration by us. We do not find the case therein mentioned alluded to elsewhere in the record. Even the style of it is nowhere given therein, nor is it cited in the brief before us. It may have been brought to the commissioner’s attention in argument. If so, we have no evidence of his “disregarding and refusing entirely to consider” it. In any event, it is not a valid assignment of error. It would be rather presumptuous for this court to undertake to control the mental processes of the Commissioner of Patents.

However, in a brief in the case of In re Sun Oil Company which involves the same question here presented, and which is being decided concurrently herewith, 49 F.(2d) 965, 18 C. C. P. A. -, we have found a citation of a Texas ease to which it is assumed allusion was made, and, because of its nature and alleged bearing upon the question at issue, we deem it not improper briefly to refer to it. Apparently, the case is that of Clifton Mfg. Co. v. Crawford-Austin Mfg. Co. (Tex. Civ. App.) 12 S.W.(2d) 1098, 1102, 19 T. M. Rep. 102.

The suit was in the state courts of Texas, the decision cited being by the Court of Civil Appeals of that state. It involved a question of alleged unfair competition and no trade-mark issue was presented.

Both parties thereto appear to have been manufacturers of, and dealers in, tents, tarpaulins, and wagon covers.

The appellee therein began the use of a material which had a color referred to as “a russet or reddjsh brown.” Appellant therein began to iise a material having the same color. Appellee sought an injunction to prevent appellant from using it. The district court granted a temporary restraining order, and, upon appeal, the Court of Civil Appeals declined to dissolve this temporary order, with the statement: “The testimony discloses that the alleged imitation of appellee’s distinctive color in the manufacture by appellants of the articles in question had just begun, and fails to show that appellants were likely to suffer any material injury by being temporarily restrained from manufacturing and selling such articles in such specific color. In view of such situation and the testimony introduced at the hearing, we are not prepared to say that the trial court abused his discretion in granting temporary restraint.”

The case probably went to trial in the district court of Texas on the merits, but this court is not advised as to that or as to its final outcome.

The Texas court indulged in a discussion ' comparing the use of a distinctive color, in an unfair competition proceeding, with the use .of geographical names in the same connection, and cited several familiar authorities. There is no hint in the ease that the appellee therein was claiming or seeking to set up any ownership of trade-mark rights in the color, such as appellant herein is seeking. The Clifton Case, supra, is not an authority of value in this proceeding. Appellant’s other authorities we think also inapplicable to the particular or direct question here involved.

There is cited as a precedent, which appellant earnestly insists is apropos, a registration .of October 16,1928, trade-mark 248,-219, to Delaware, Lackawanna & Western Coal Co. v. Blackwood Coal & Coke Company for coal. The certificate says: “The trade mark” consists in coloring the surface of some of the lumps of coal in the mass blue, and the drawing is lined to indicate blue color.”

The validity of this registration is not involved here and there is no occasion for intimating any opinion as to that. It seems sufficient to say that there is at least one distinction between that case and this, which lies in the fact that the color there does not. become an integral portion of the goods, but is merely applied to surface. Here appellant’s mark when applied to the goods beeomes a part of the goods. That it is applied for distinguishing and not for fuñé-1 tional purposes can make no difference, so far as the trade-mark registration act is concerned, since the effect is the same.

Hopkins on Trade-Marks (4th Ed.) p. 284, says: “The courts have been uniformly averse to recognizing anything remotely resembling a monopoly of color. There are not more than seven primary colors, and if one of these may be appropriated as a distinguishing characteristic of a label, it would not take long to appropriate the rest. * * * ’ To allow colors to be appropriated as distinguishing characteristics would foster monopoly by foreclosing the use by others of any tasty dress.”

Again at page 139, discussing “What Constitutes a Trade-Mark,” the same author says: “See. 53. The trade-marked article not a trade-mark. — It is obvious that if a commercial article itself could constitute a trade-mark, there would be little use for patent laws. As Judge Carpenter said, “in the very nature of the case, * * * the trade-mark must be something other than, and separate from, the merchandise.”

Appellant earnestly stresses the argument that gasoline being a liquid produet, sold almost wholly in bulk, the coloring process furnishes the only practical method so far devised to assure adequate, full trade-mark protection. This may be true, but certainly this court has not the power to constitute something a trade-mark which is not' a legal mark, in fact, simply because certain products, by reason of physical laws, are incapable of having the benefit, in the particular manner which may be wished, of an actual mark.

It may be said that, even if a legal trademark function could be given to color alone when it is an integral part of the goods, thereby saying, in effect, that the goods themselves may constitute their own trade-mark, by reason of one of their ingredients which affects the whole, the question of such a mark being merely descriptive of the goods would immediately arise. Obviously,- the word “violet” applied to violet-colored gasoline would be descriptive of a character or quality of that particular gasoline, and hence could not be registered as a trade-mark by reason of the prohibition contained in the proviso of section 5 of the Trade-Mark Registration Act (15 USCA § 85). Since it is: proposed to register the color itself instead of the name of the color, would such a mark be any less descriptive? ■ • r

We cannot think so.

Color alone, as appellant applies it, is not capable of being treated as a trade-mark entitled to registration under tbe Trade-Mark Registration Act of February 20, 1905 (15 USCA §§ 81-109). Even were this not true, its registration would have to be denied on the ground that such mark is merely descriptive.

The decision of the Commissioner of Patients is affirmed.

Affirmed.


author: HATFIELD, Associate Judge.

text:
    In re WALKER.
    No. 2766.
    Court of Customs and Patent Appeals.
    May 27, 1931.
    Warren R. Walker (Frederick Transom, of Washington, D. C., and Thos. H. Brown, of Hoboken, NT. J., of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for the 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 rejecting claims 1 to 5, inclusive, and 9 and 10, in appellant’s application for a patent for an alleged invention relating to improvements in electric switches. . ■

- Claims 1, 3, and 9 are illustrative. They read:

“1. In a gas proof electric switch, a glass tube mercury switch, a plurality of coaxially pivoted supports therefor, electrical connections from the switch terminals to the pivots of said supports, a gas tight casing about said switch and its pivotal support, leads through gas tight passages from said pivots to points outside said casing, and a key member for operating said switch which extends through said easing and mechanically connects with the pivoted support of said switch, and a gas tight packing between said key and the casing.”
“3. In a gas proof eleetrie switch a liquid flow glass,.switch hermetically sealed, a plurality of coaxially pivoted supports therefor which serve also as terminal leads, a gas tight casing about said switch and its pivotal support, leads through gas tight passages from said pivotal supports to points outside said casing, a key member for operating said switch which extends through said cásing and mechanically connects with the pivoted support of said switch, and a gas tight packing between said key and the casing.”
“9. In an ignition proof switch, for use in explosive atmospheres, hermetically sealed glass inclosed switch elements, designed to open and close an eleetrie circuit, in combination with an hermetically sealed outer easing also inclosing said switch elements, and means for operating the switch elements from the explosive atmosphere side of the easing.”

The references are:

Stoekle, 1,492,584, May 6, 1924.
White (Brit.), 13,602, June 13, 1906.
Kirwan (Brit.), 26,088, May 11, 1910.

The purpose of the alleged invention is to provide an electric switch mechanism which may be used with safety in the presence of explosive gases.

The fundamental combination claimed, according to counsel for appellant, is an electric switch mechanism surrounded by two inclosures, one of which is made of glass.

The invention is fully defined in the quoted claims,- and need not be further described.

The patent to Stoekle discloses an eleetrie switch of the mercury type used by appellant.

The British patent to White discloses an eleetrie switch inclosed within a watef tight sealed casing.

The patent to Kirwan discloses a mercury switch inclosed within a casing, the details of which have been fully described in the decisions below.

In its decision denying the patentability of the involved claims, the Board of Appeals, among other things, said:

“Claims 1 and 2 require that a glass tube mercury switch -be mounted upon pivots and provided with electrical connections and that it be mounted in a gas tight easing on pivotal supports and that a key or shaft extend through the wall of the easing in gas tight relation thereto to actuate the switch. This combination is fully anticipated by broadly associating the mercury switch element of Kirwan in the water tight easing shown by White and where it could be actuated by the key or shaft extending in water tight relation through the wall. We agree with the examiner’s position that where the patent to White discloses a water tight easing it involves no invention to utilize it as a gas tight easing. If it is water tight it will undoubtedly be gas tight enough for applicant’s purpose in that gases would not diffuse through such tight fitting bearings. There would be no difference in pressure causing such transfer of gas into and out of the easing. We find no patentable novelty in the broad substitution of the glass tube for the insulating fibre of which Kirwan’s mercury eup is composed. We can find no reason why the material of the tube functions in any different or unexpected way by reason of its being made of glass. It would seem to be still more secure against breakage if made of fibre.
“Claims 3, 4 and 5 add the limitation that the glass container is hermetically sealed. This is regarded as being only an obvious detail if it is desired to use the device for the particular, purpose contemplated by applicant. It may be noted, however, .that Stoekle shows that this feature is old in the glass mercury switch.
“Claims 9 and 10 emphasize that the outer easing is hermetically sealed and it is contended by applicant that this provides a'double safety precaution. While' this is true we believe it to be only a mere addition or duplication of the safety features and to be a matter of choice. This'combination is entirely anticipated if the. hermetically closed glass mercury element of Stoekle be substituted bodily for the knife blade or snap switch of White, only the simplest order of mechanical' modification being necessary to connect these two elements inside of White’s casing such as placing the glass cylinder of Stoekle concentric with the actuating shaft g of White.
“On careful consideration we are unable to find patentable novelty in this broad association even considering the double safety feature discussed by applicant. We believe the association of these two disclosures to involve only simple substitution and the matter of double safety tó be only in the nature of addition or duplication without any new patentable cooperation.”

Counsel for appellant has earnestly and ably argued that appellant’s structure is novel; that new and useful results are obtained therefrom; and that appellant is entitled to a patent.

However, although we have given'careful consideration to the arguments presented by counsel for appellant, we are unable to say that the tribunals of the Patent Office erred in denying the patentability of the involved claims. On the contrary, we. are in accord with both the reasoning and the-, conclusion reached by them.

The' decision of the Board of Appeals; is affirmed.

Affirmed