text:
    In re COGSWELL.
    Patent Appeal No. 2662.
    Court of Customs and Patent Appeals.
    March 31, 1931.
    Robert Cushman, of Boston, Mass. (A. L. Bryant, of Washington, D. C., 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 Patent Office sustained the action of the Examiner in denying the petition of appellant for the reissue of a patent, and he'has appealed to this court.

The application relates to improvements claimed to have been made in machinery for grading soles, taps, heel lifts, counters, and other leather blanks used in the manufacture of shoes. It seems that such blanks are graded or classified according to the thickness of the thinnest part or spot.

Laeene Manufacturing Company is the assignee of appellant, who has died since his assignment of the claims in issue, and the application is being proseeuted in its behalf. This company is also the assignee of several patents heretofore issued to one E. A. Nichols, including one numbered 1,130,321, issued March 2,1915, to which it is stated in the reissue application there were applied certain new features embodied in patent 1,366,889, issued to Cogswell January 25, 1921.

It is this latter patent which it is sought to surrender and have reissued under petition filed October 24,1921.

The several patents heretofore issued to ‘Nichols and to Cogswell are for machines for grading the leather blanks referred to above, and some, at least, of them, as stated in the brief for appellant, contain the following elements :

“(1) Detecting mechanism at the ingoing end of the machine for measuring successive blanks as they are fed through the machine and determining the thickness of their thinnest spots; (2) grading mechanism at or near the outgoing end of the machine for performing some grading operation upon the blanks in accordance with the thinness measurements determined by the detecting mechanism; and (3) setting or transmitting mechanism by which the thinness measurements of the detecting mechanism are preserved and transmitted to the grading mechanism.”

These elements are all present in. the patent to Cogswell, reissue of which is here sought, and the essential feature for which the reissue is so sought is a claimed improvement which will admit a succeeding blank into the machine before the preceding blank has left the machine. Twenty-three cláims are presented of which No. 1 may be taken as being fairly typical:

“1. A machine of the kind described comprising grade detecting mechanism for detecting the grade of successive blanks of stock according to thickness;, grading mechanism controlled in response to said grade detecting mechanism for utilizing the grade detection, means governing the admission of stock to said grade detecting mechanism; and means to operate said admission governing means to admit a piece of stock to the detecting mechanism before a preceding piece of stock has left the grading mechanism.” (Italics ours.)

The matter1 alleged to have been in the patent but not covered by the claims thereof, and now claimed by the reissue application, ■is embraced in the clause which we have italicized.

In its decision the Board of Appeals said:

“The claims on appeal áre drawn to a machine having an essentially different mode of operation. They require a construction in which the succeeding piece of stock is admitted to the detecting mechanism before the preceding piece of stock has left the grading mechanism. They define an invention which not only is not disclosed in the patent but which is inconsistent with the patent disclosure. The rejection on the ground of new matter is deemed well founded.”

The machine, improvements upon which are here involved, is a complicated one and difficult, if not impossible, of description, in a nontechnical manner.

The patent to Cogswell, reissue of which is sought so as to include the feature italicized in our quotation of claim 1, supra, which appellant insists was disclosed but not claimed in said patent, contains in its specifications certain statements relating to the operation of the device as there patented, which is quoted in the brief of the Solicitor for the Patent Office, as follows:

“As the marking devices and evening knives were at the rear of the machine, while the feeling and setting mechanism was at the front of the machine, it was most important that the gate actuating devices be accurately controlled so as to prevent a successive blank from entering the machine, until in the cycle of operations, the machine was ready to receive it and in condition to reset the marking and evening mechanism according to the grading of the new blank. My present invention accomplishes the result above briefly explained, and I provide means cooperating with the feeler mechanism to maintain the gate closed even after the blank has passed out of contact with the feelers, thus preventing the gate opening devices to be actuated to open the gate until the proper time and until the machine is ready to receive a successive blank. * * *
“It is important that this gate be maintained closed, after a piece of stock has been fed into the machine, until the cycle of the machine inducting the setting of the marking or stamping mechanism and in ease of an evening machine of the cutting knives as ■ well, be allowed to perform their respective functions before the succeeding sole is fed into the machine. * * *
“The gate controlling mechanism, as above described depends for opening and closing, as well as for the extent of throw or lift in the opening and closing aetion, upon the aetion of the shoe 44, and as it is desira-. Me to adjust this shoe, longitudinally on the arm 34, for particular work, it frequently happens that, when short stock particularly is being fed through, the stock will be fed past the position of the shoe 44, permitting said shoe to drop and thereby opening the gate, before said stock has traversed the rest of the machine and received its stamping or grade marking, its cutting aetion, i e., before the cycle of the machine has been completed, which cycle has been set by the aetion of the detector mechanism and the pawls and rack wheel in this type of machine. Under such circumstances, therefore, the danger exists that a successive piece of stock being fed in as soon as the gate is opened,, would strike the mechanism and detector while the preceding piece of stock was still being acted upon, and therefore the proper operation and function of the machine would be negatived or the parts damaged and broken. To obviate this difficulty, and to enable the machine to operate upon short stock, thus making it more automatic and with the capacity for larger range of work, 1 provide a device independent of the shoe 44 to control the gate opening operation." (Italics ours.)

The Solicitor for the Patent Office urges before us that the feature of the claims in the reissue application, relating to “means to admit a piece of stock to the detecting mechanism before a preceding piece of stock has left the grading mechanism” (italics ours), is entirely inconsistent with, in fact directly contrary to, the statements which we have italicized in the quotation from the specifications, supra.

That the inconsistency so pointed out by the Solicitor for the Patent Office exists admits of no doubt. This appellant concedes. Also it is true that no claim of the patent is broad enough to include the feature now sought in the reissue application.

Appellant insists, however, that, since the above-quoted statements of the patent appeared in the specifications and not in the claims thereof, and were, in fact, erroneous, he is' entitled, under the reissue statute, to have the alleged error of the specifications corrected and make the claim now presented.

It is admitted, as indeed it must be, that the Cogswell patent per se does not disclose the structure claimed in the application for reissue. However, that patent makes reference to certain patents for evening, grading, and marking machines granted to Elmer P. Nichols, “such for example as Reissue No. 12,288, dated November 22, 1904, and No. 841,809, dated January 22, 1907.” Also it states:

“The object of the invention is to improve and perfect machines of this type, particularly with reference to the gate controlling and marker or stamp tripping mechanism, as shown in E. P. Nichols Patent, No. 1,104,378, dated July 31,1914.”

The Board, in its opinion, indicated, and the Solicitor for the Patent Office, in his brief and in oral argument, concedes, that the reference in the Cogswell patent to the Nichols patents may be treated as bringing into the former such disclosures as were contained in the latter “to the extent that the original [Cogswell] patent gave any intimation of intention to include anything disclosed by Nichols.” This includes the skiving, evening, and marking devices as disclosed in these Nichols patents specifically referred to by their numbers in the Cogswell patent.

But Nichols patent, 1,130,321, was not mentioned in the Cogswell patent; it was brought into this proceeding for the first time in the reissue application. It is, therefore, insisted that it may not be treated as a part of the disclosures of the Cogswell patent for reissue purposes.

The brief pf the Solicitor for the Patent Office says:

“Of course, an inaccurate description of operation of a structure clearly disclosed in the original patent might be corrected in a reissue. Appellant now attempts to argue (brief p. 31-34), as to an alleged error in the Board’s decision as to a ‘supposed positive connection’ whereas the application now discloses a 'yielding connection’ táken from the Nichols patent No. 1,130,321, which disclosure was not in the original application for patent sought to be reissued and which Nichols patent was not mentioned therein. Had the original patent disclosed the structure now disclosed in the reissue, or not disclosing it, had it referred to Nichols patent No. 1,130,321 there might be some point to appellant’s argument as to the difference between yielding and positive. connections. If such structure [Cogswell] had been disclosed directly in the application, or indirectly by reference to a patent by number, a mere inaccurate description of its operation might be cured. But here the original patent neither directly nor indirectly disclosed what is in Nichols patent No. 1,130,321, and the ‘connection’ therefrom which appellant has introduced into the present ease to make it operate as he would now claim is, as stated by the Board of Appeals (R. p. 115), ‘inconsistent with the disclosure in appellant’s patent.’
“That the feature of Nichols patent 1,-130,321 now sought to be incorporated into this reissue application is inconsistent with the disclosure of appellant’s patent is in harmony with the fact that appellant’s patent mentions by number at least three Nichols patents upon which appellant’s patent is supposed to be an improvement, but does not mention Nichols 1,130,321 now attempted to be incorporated as part of the disclosure of the reissue application.”

Without the Nichols patent, 1,130,321, it seems obvious that the Cogswell patent does not make a disclosure sufficient to support the reissue claim as to the feature particularly sought.

Assuming, without deciding, that, if said patent, 1,130,321, had been specifically referred to in the Cogswell patent, it would be a sufficient disclosure to support the reissue claims, the specifications and drawings being altered, as the reissue application proposes, the question is presented, Does the reissue statute admit of it now'being introduced and considered for-the purposes desired?

We are unable to see upon what theory this can be held permissible.

The pertinent portion of section 4916 of the Revised Statutes, 35 USCA § 64, reads:

“Whenever any patent is wholly or partly inoperative or invalid, by reason of a defective or insufficient specification * * * if the error has arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, the commissioner shall * * * cause a patent for the same invention, and in accordance with the corrected specification) to be reissued * * * but no new matter shall be introduced into the specification, nor in case of a machine patent shall the model or drawings be amended, except each by the other.”

The patent, 1,366,889,- granted to Cogs-well, in so far as it relates to the feature of feeding stock by the impulse or impulses of the detecting mechanisms, was confined to admitting a piece after, and only after, a preceding piece had passed from the skiving, evening, and marking parts of the machine.

We do not understand that this per se is claimed or conceded to be either “inoperative or invalid.” In this proceeding, at least, it must be treated as complete and in exact accordance with the specifications, which are supported by the drawings, and the claims, all of which constitute its parts. patent

Had the Nichols patent, 1,130,321, been in the Cogswell application, and had it been given the construction now asked for it in this proceeding, obviously the patent into which said application would have ripened would of necessity have been different from that into which it did ripen. It could not have been for the same invention.

The statute has been so often construed, and its construction is so well 'understood, as that it is not deemed necessary to quote numerous authorities holding that a reissue must be limited to the same invention, and that new matter may not be introduced into a reissue specification. A decision of this court in Morgan v. Drake et al, 36 F.(2d) 511, 17 C. C. P. A. 729, and cases therein cited, are in point.

Learned counsel for appellant has cited us to certain decisions of the Supreme Court of the United States, to wit: Rubber Co. v. Goodyear, 9 Wall. (76 U. S.) 788,19 L. Ed. 566, and Eames v. Andrews, 122 U. S. 49, 7 S. Ct. 1073, 30 L. Ed. 1064.

These decisions are cited in support of appellant’s proposition “that an invention which was inherent in the structure of the ■original patent, although not explicitly • described, may be covered by reissue (Rubber ‘Co. v. Goodyear) ; and that a structural and functional condition of common knowledge, although not described in the original patent, may be covered by reissue (Eames v. Andrews) .”

Accepting, without holding, these principles to be correct as abstract statements, nevertheless we cannot agree with counsel as to ■their applicability here.

There is nothing in the Cogswell patent -to show that the element now contended for was “inherent” therein, except upon the assumption that (a) Nichols, 1,130,321, showed it, and that (b) Nichols, 1,130,321, was embraced in Cogswell by his general references. But, as has been stated, even if the assumption and the admission of .the Nichols patent were proper, then that which would have been inherent would have been something different ■.from what was patented and would not constitute the same invention.

As for the second phase of the proposition, that of common knowledge, surely there is nothing in this record to show that the principle of feeding a piece of stock, in the manner described, before the preceding piece had passed from the skiving operation was “a structural and functional condition of common knowledge.” The device for doing this is the very thing upon which appellant here seeks patent, and, so far as we ,are aware, was for the first time fully, specifically, and definitely disclosed to the art in his reissue application.

The decision of the Board of Appeals being, in our opinion, without error, is affirmed.

Affirmed.


source: Caselaw Access Project

author: GRAHAM, Presiding Judge.

license: Public Domain

text:
    In re PEILER.

    Patent Appeal No. 2651.
    Court of Customs and Patent Appeals.
    March 31, 1931.
    Vernon M. Dorsey, of Washington, D. C. (S. F. Parham, of Washington, D. C., and L. G. Bates, of Hartford, Conn., 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.

      Rehearing denied May 27, 1931.

   GRAHAM, Presiding Judge.

Appellant has taken out a series of patents on glass-feeding mechanism and processes. On May 5,1919, he filed his application, serial No. 294,792, with claims for device and processes, and this application afterwards went to patent on January 3, 1928, as patent No. 1,655,391. The application here in issue is a division of said application, and was filed April 9, 1926. On November 25, 1925, the appellant filed an application for patent on improvements in the same device and processes, which afterward went to patent bn February 16, 1926, as patent- No. 1,573,742. The divisional application now before the court involves a cam mechanism governing the rise and fall of the impelling implement which controls the discharge of the glass, and which cam mechanism is adjustable while the impelling implement and other mechanism is in operation.

The Examiner and Board of Appeals rejected certain of the claims of appellant. Appeal was taken from this action, but in this court some of the rejected claims are abandoned, so that we have for consideration only rejected claims 1 to 6, inclusive, 8, 15, and 16. Claim 1 is fairly typical of said claims, and is here given:

“1. The combination with apparatus for feeding molten glass, including a container having a submerged outlet for discharging the glass, of an implement movable in adhesive contact with glass in the container toward and from the outlet, a cam for reciprocating the implement to cause periodic application of accelerating and retarding impulses to the glass ip the outlet, and means for varying the contour of the contact surface of the cam while the cam. is rotating.”

- The Board of Appeals rejected these claims on reference' to' appellant’s patents heretofore cited, on the general ground that to issue a patent to appellant on this application would result in double patenting; the invention in issue being held to be fully covered by appellant’s disclosure and claims in said patent No. 1,573,742. The appellant contends that, under the Patent Office practice at the time the application which ripened into said patent No. 1,573,742 was being prosecuted, he could not claim for the specific invention herein claimed upon; that in said application, in his specification and drawings, he disclosed several alternative forms of application of his invention, and that, while said specification and drawings showed the cam mechanism here, in question, his claims were drawn therein on a form of the mechanism which did not show such mechanism; that he could not, under said practice, claim for both, and is therefore entitled here to claim a patent on the specific device which he could not claim there.

As opposed to this view, the Solicitor of the Patent Office argues that the specification and drawings of appellant in the application in said 1,573,742 disclosed the identical device here claimed upon, and that the claims therein fully covered it. It is also argued that, inasmuch as appellant, in said application, showed alternative devices, with claims covering all, the patent should be construed as covering the most specific showing therein. In this connection the Solicitor calls' attention to the statement of the Examiner:

“It is well settled, it seems, that where a patent discloses several species of an invention and contains claims specific to one of these species, the species on which the specific claims of the patent are based cannot form the patentable subject matter of the claims of another patent.”

The Board of Appeals has this to say on the subject:

“It is also contended that the specific claims of No. 1,573,742 are drawn to the “paddle-needle” feeder .disclosed in Figs. 1 to 11, inclusive, and the rejected claims to the needle feeder of Figs. 12 to 19, inclusive, so that the rejected claims could not be made in the patent. The paddle and its operating devices are entirely separate and distinet from the needle operating devices ú^Figs. 1 to 11, inclusive, and there is no claim in the patent which is specific to the operating devices of the needle mechanism of this modification. The fact that there are claims specific to the paddle operating devices would not preclude the allowance of claims to the needle or plunger operating mechanism of either claims 1 to 11, inclusive, or claims 12 to 19, inclusive, and there is a claim generic to both of them (see claim 35). Of the rejected claims, claims 1 to 6, inclusive and 8 are limited to adjustment of one lobe of the cam relative to the other while the cam is rotating, as disclosed in Figs. 12 to 19, inclusive, .of the patent and involved in claims 10 and 35 of the same. Claims 7 and 11 to 14, inclusive, are not so limited and would read on the form shown in Figs. 1 to 11, inclusive.
“Claims 19 and 25 of the patent involve variation of the length of the feed period without varying the frequency of the severing operation and this is just what the rejected claims cover.
“To state the matter briefly, our conclusion is that the construction whereby the cant devices for operating the impeller are adjusted for the purpose of varying the up and down strokes is not a different invention from the phase changing operation between ■the impeller operating devices and the severing means which results therefrom, as covered by claims 19, 22, 25 and 35 of patent No. 1,573,742.
“There it no reason why the rejected claims could not have been made in the patent and we see no proper line of division between these claims and those of the patent.

The device in question here is used in drawing molten glass from a container, and consists of an impeller or plunger which is caused to accelerate the flow of the molten glass and expel it in charges of a certain size and form into the molds at the will of the operator. The particular feature here involved is a cam with a plurality of parts, which raises and lowers the impeller. The construction of the cam is as follows: Two sleeves, freely rotatable on a shaft, have bevel gears on their outer extremities. The inner extremities thereof have flanges, which constitute a part of the cam. To these flanges are bolted cam lobes, one to the' flange of the right sleeve and one to the flange of the left. These constitute the cam for raising and lowering the impeller. Each sleeve is caused to •rotate in the same direction by bevel gears placed between the bevel gears on the outer extremities of said sleeves and other bevel gears fixed immovably upon the rotating shaft. The operator may, while the mechanism is operating, by means of a handle, connected with a worm gear which engages a movable, cogged sector, turn the small interconnecting beveled cogwheel one way or the other, and thus move the portion of the cam attached to that particular sleeve. Both ■sleeves have such adjustable means. Thus the operator can regulate the stroke of the impeller while the machine is in operation, at will.

The precise device in question is fully described in appellant’s specification, on pages 6 and 7, and is shown in his drawings 12 to 19, inclusive, in said patent No. 1,573,742. The Solicitor for the Patent Office contends that claims 28 and 29 of said patent fully cover the device here sought to be patented. Said claims are as follows:

“28. In apparatus for separating molten glass into mold charges, the combination of a container for the glass having a submerged discharge outlet, a vertically movable implement projecting downwardly into the glass in working alignment with the outlet, shears adapted to close beneath the outlet to sever mold charges suspended therebeneath, and means for closing the shears periodically and reciprocating the implement vertically in timed relation to the shear operation, said means being adapted to permit adjustment of said timed relation while maintaining uniform reciprocations of the implement.
“29. In apparatus for separating molten glass into mold charges the combination of a container for the glass having a discharge outlet, periodically operable means for timing the formation and suspension of successive gathers of glass beneath said outlet, severing means operating periodically, in timed relation to said timing means, to sever a mold charge from each suspended gather, and means, operable during the continued operation of the apparatus, for altering the said timed relation between the said severing and timing means.”

Appellant invokes the rule that he may have separate valid patents as he makes patentable inventions, and that he has the option to secure all of these inventions, if they be related, by a single patent or by many patents. He further argues that the fact that he has described this patent device in a former application does not preclude him from having a patent upon the same now, so long as he did not claim the same in his application which ripened into said patent. In support of this contention, he cites Century Elec. Co. v. Westinghouse Elec. Co. (C. C. A.) 191 F. 350; Wirebounds Patents Co. v. Saranac, etc. (C. C. A.) 37 F.(2d) 830; Traitel Marble Co. v. Hungerford Brass & Copper Co. (C. C. A.) 22 F.(2d) 259; and Thomson-Houston Elec. Co. v. Ohio Brass Co. (C. C. A.) 80 F. 712, 729.

This is the law, and the appellant’s rights here must be measured by it. If he has disclosed, but not claimed, the particular invention here in question in his patent, he can claim it now. However, we are in agreement with the Solicitor of the Patent Office in his construction of claims 28 and 29 of said patent No. 1,573,742. In claim 28,'for instance, “means for * * * reciprocating the implement vertically in timed relation to the shear operation, said means being adapted to permit adjustment of said timed relation while maintaining uniform reciprocations of the implement,” is another way of stating what appellant has stated in his rejected claims wherein he recites, “means for varying the contour of the contact surface of the cam while the cam is rotating.” The essential feature is the means for controlling the impeller mechanism while it is in motion. This element, in our opinion, was not only fully disclosed in the specification and drawings of appellant’s patent No. 1,573,742, but was claimed therein in said claims 28 and 29. Hence to grant his application here on the rejected claims would be to give him another patent upon a device already patented, and' would operate to prolong his monopoly beyond the period which the Legislature provided he might have.

The decision of the Board of Appeals is affirmed.

Affirmed.


author: BLAND, Associate Judge.

text:
    HEDENSKOOG v. BACKUS.
    Patent Appeal No. 2642.
    Court of Customs and Patent Appeals.
    March 25, 1931.
    Wm. O. Belt, of Chicago, Ill., for appellant.
    Henry E. Stauffer, of Washington, D. C., for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   BLAND, Associate Judge.

This is an interference ease in which appeal is taken from the decision of the Board of Appeals of the United States Patent Office, reversing the decision of the Examiner of Interferences, and awarding priority of invention of the subject-matter in issue to appellee.

The application relates to apparatus for automatically setting tenpins on the beds of bowling alleys and includes a frame which is elevated about two feet above the bed of the alley and into which the pins are placed by an attendant. The frame is then caused to descend and set the pins on the alley in correct position. The pins are then released and the frame automatically moves upward to its original position.

Five counts were under consideration by the Examiner of Interferences and the Board of Appeals, and priority in counts 1 and 3: was awarded to Hedenskoog on the ground that the counts did not read on the Backus construction. No appeal was taken by Backus. The counts in issue in which priority was awarded to Backus by the Board of Appeals, are three in number and follow:

“2. A pin-setting machine for bowling alleys, comprising a frame movable toward and from the alley bed, bottom rests carried by the frame, slides for receiving the pins and directing the bottoms thereof onto said bottom' rests, and means for depositing the.pins on the alley bed.”
“4. A pin-setting machine for bowling alleys, comprising a frame suspended for vertical movement above the alley bed and having pockets therein for receiving pins to be positioned, and setting means carried by said frame for engaging said pins bodily at points remote from the greatest diameter of their body portions, said pin-engaging means being further adapted to position said pins on said alley bed.
“5. A frame for receiving pins and positioning the same on a bowling alley, comprising a plurality of pin-receiving pockets, pin-engaging and positioning means mounted on said frame, means for normally holding said pin-engaging means out of engagement with said pins, and means carried by said frame for actuating said pin-engaging means to engage the pins and position the same upon the alley bed, said holding means being automatically actuated to disengage said pin-engaging means after the pins have been positioned.”

The counts are taken from the Hedenskoog patent which had been inadvertently issued, because the Backus application involved herein was copending with the Hedenskoog application. n •

The subject-matter of the counts at issue, according to the decision of the Board, was disclosed by Backus in a machine built in 1920. The Examiner of Interferences found that the 1920 Backus structure was a full conception, but not a reduction to practice of the subject-matter of the counts, and held that Backus was not diligent from the date of his conception during the period from 1920 to the time when Hedenskoog entered the field, and found that the 1920 structure was an abandoned experiment.

The Board of Appeals in a well-considered and well-written decision, deserving of special mention, held that the 1920 structure was, not only sufficient evidence of conception, but was a reduction to practice of the subject-matter of the counts, and found that it was not an abandoned experiment. Having found that Backus was the first to conceive and the first to reduce to practice, and that he had not concealed his. invention, he was held to be entitled to priority.

Appellant here contends that the Board erred in finding that the 1920 structure was a reduction to practice and not an abandoned experiment. While there are various minor questions discussed other than the question of reduction to practice by, the construction of the 1920 machine, we think it is correct to say that the sole controlling issue in the case at bar is whether or not appellee’s 1920 machine was a reduction to practice or an abandoned experiment. Concerning this issue the Board of Appeals said:

“The Examiner of Interferences seems to have been influenced somewhat by Backus’ subsequent actions, or lack of action, in his holding that the 1920 device was merely an experiment and an abandoned one. We do not consider the subsequent actions on that point as particularly important. If the device was reduced to practice it is immaterial what was done afterward if it was not concealed, and the inventor was not stirred to activity by his opponent entering the field. We do not consider it necessary to discuss the question of concealment as we find no substantial evidence showing this fact nor is there any evidence that Backus was stirred into activity by Hedenskoog; however it will not be amiss to refer briefly to the actions of Backus between 1920 and 1926. The evidence clearly shows that the party Backus was suffering under severe physicial disability — that it was substantially impossible for him to go into the shop and construct the machine himself. It would appear that it was necessary for him to rely upon others to work out the mechanical details when he had devised the general means and described the manner in which he desired them to function. Various witnesses have testified that this matter was more or less constantly in Backus’ mind and that he was attempting to get others to make an improved model of the 1920 machine. It is shown that he advertised and made other efforts to secure a proper mechanic, and that. during part of the period he was waiting for others, of whose skill he had knowledge, to reach a point where they would have time and opportunity to take up the work for him. We consider that this shows that while his efforts were not very effective still he had no idea of abandoning the invention and was striving to have it converted into a commercially successful form.”

The facts and the law as affecting this issue are so aptly and correctly expressed in the opinion of the Board of Appeals that an extended statement of facts and discussion of applicable law is deemed unnecessary.

The 1920 structure was later dismantled, and parts of it were used in making a new machine in 1926. For the purposes of prosecuting the interference, appellee has reconstructed the 1920 machine and has brought the same before the patent tribunals and this court as “Backus Exhibit No. 5 operative illustration of 1920 machine.” The 1926 machine is also before us as Exhibit No. 6.

The 1920 machine after construction was operated to set pins in the presence of witnesses who testified that the machine made a great deal of noise, but that it operated to set the pins. Backus testified that he was satisfied with the operation except as to the noise, and that he determined to work out a means for eliminating the same. This machine was never placed on a bowling alley, but its operable parts and mode of operation, according to the testimony, were, with the exception of the foot or tripping device, whieh was located under the frame, substantially the same as those of the 1926 device. The projecting member whieh struck the floor and actuated the mechanism was later located in a different position, and this fact is clearly immaterial to the issue here. The 1920 structure was not a complete machine. It was complete to the extent that all the’operable parts for setting one or possibly two pins, in accordance with-the terms of the counts at issue, were present. No attempt was ever made to complete this particular machine so that it would set the full complement of pins. The Board held that the evidence showed that the machine was operative, and we agree with this finding.

The main contention of appellant here is that the 1920 machine, not being complete so as to properly set a full complement of pins, and later being dismantled and nothing further having been done to the machine until after appellant’s application had been filed, must be looked upon as an abandoned experiment. Concerning this issue the Board of Appeals properly said:

“The record shows that after Backus constructed, or had constructed for him, the machine in 1920 it was more or less dismantled and moved around from one portion of the building to another without anything further being done to it until long after the application was filed. The evidence clearly shows that Backus realized that the machine was not satisfactory, and from this state of facts strong presumption arises that it was an experiment. An examination of the record, however, we consider shows a different state of facts. In the first place we should note that the counts of the issue, in some respects, are rather broad; certainly counts 2, 4 and 5 are. It has been contended by Hedenskoog that inasmuch as the reconstructed 1920 model contains parts that were not present in the original machine that the reconstruction is of no value; however we consider that the evidence clearly shows that the portions of the apparatus which are covered by the elements of the counts were present in the apparatus of 1920. Another contention of Hedenskoog is that it is admitted by Backus that the full complement of pins was not manipulated in the earlier machine, or, for that matter, in the reconstructed model, and he contends that therefore the 1920 apparatus does not cover the subject-matter of the counts. We do not consider this contention sound. In some machines if parts were missing and it would not be possible to be sure how the machine would operate with the- missing elements, a contention of this nature might be justified. In this instance, however, each unit of the machine functioned in the same manner as the other units. Pin setting machines of this general nature are old, and in our opinion, when one unit functions properly we consider it sufficient proof to show that the entire set would operate when the duplicate units are in place.”

To the foregoing correct statement of the facts and law might be added that the Board’s conclusion in this respect is in entire harmony with the decided eases.

If appellee actually conceived and reduced to practice his invention in 1920, he is the first inventor. His subsequent acts are material only, under the circumstances of this ease, as bearing upon the question of whether or not his work was experimental only and later abandoned. The Board concluded that, while Backus’ conduct subsequent to his 1920 activities was strongly presumptive that his activities were experimental only, an examination of the record and a weighing of the evidence therein contained necessarily brought about a different conclusion. The evidence relied upon is quoted above.

In Smith v. Brooks, 24 App. D. C. 75, 1904 C. D. 672, substanially the same facts and the same legal questions were before the Court of Appeals of the District of Columbia, and the gist of the decision is well summed up in the first part of the syllabus which is as follows:

“A delay of 2 years and 8 months after an alleged reduction to practice raises a strong presumption that what was done amounted to a mere abandoned experiment; but such presumption may be overcome by satisfactory proof that the machine was successfully operated.”

Appellant seems to base his right to pri-r ority mainly upon the proposition that the .tests of appellee’s 1920 structure showed that it was admittedly an unsatisfactory machine from a commercial standpoint.

Agreeable to the finding of the Board we conclude that, as affects the counts in this casé and the issue as presented, the noisy character of the machine which rendered it commercially unsatisfactory is not a sufficient basis to justify a conclusion that the 1920 machine was not a reduction to practice. The machine was demonstrably proven to operate in setting the pins in the manner called for in the counts. The necessary details of improvement in order to make it commercially desirable are matters with which we are not concerned. The 1926 machine was constructed upon the same hroad principle which characterized the 1920 machine, and in its construction was the detail structure for making the 1920 machine commercially desirable. As far as the issues in this case are concerned, the two structures are identical. On this subject the Board of Appeals properly said:

“In our opinion the pin setting machine built in 1920 is proven to meet the counts of the issue and to have been operative and a reduction to practice. It is true that the 1920 model was not satisfactory to Backus but he realized, as disclosed by his testimony and by the supporting witnesses, what the trouble was. The projecting member that struck the' floor to actuate the mechanism was noisy and he realized that this would prevent the commercial success of the apparatus and decided that it would be necessary to actuate the mechanism from overhead means. We do not consider that the question of commercial success enters into that of reduction to practice. • There is nothing in the counts of the issue that specifies whether the device is actuated from the floor or overhead. The contention that the earlier machine may not have accurately spotted the pins we do not consider as entitled to any weight as in our opinion this was simply a matter of mechanical accuracy and anyone competent to build machines of this nature would perfect the parts until they functioned properly and in the manner intended.”

The Board of Appeals agreed with the Examiner to the extent that, if the 1920 operations were to be regarded only as evidence of conception and not of reduction to practice, Backus was not diligent. Since we agree with the Board that the 1920 structure was a complete reduction to practice, we do not find it necessary to discuss the diligence of Backus.

Appellant has argued at length here that this court should apply the rule laid down in Vanore v. Improta, 58 App. D. C. 130, 25 F. (2d) 918, 923, in which is found the following:

“As against the inventor who is guilty of. inexcusable delay in asserting his priority according to law, all the equities and presumptions are in favor of the inventor who, though later in conception, first files his application for a patent. An inventor may have a reasonable excuse for not promptly applying for a patent; but, if he has none, and unreasonably delays in taking the necessary steps to secure a patent, the courts are warranted in presuming that his claim of reduction to practice was nothing better than an abandoned experiment. Mason v. Hep-burn, 13 App. D. C. 86, 94, 95. * * * ”

It will be noticed there that the court concluded that by reason of the delay the original alleged invention should be regarded as an abandoned experiment, and oited Mason v. Hepburn, 13 App. D. C. 86, 95. As was observed with reference to Smith v. Brooks, supra, this rule does not apply when the record shows that it was not an abandoned experiment. While the exact question presented here was not before this court in Townsend v. Smith, 36 F.(2d) 292, 17 C. C. P. A. 647, and Miller v. Hayman, 46 F.(2d) 188, 18 C. C. P. A.-, the facts and the reasoning in the eases are quite analogous and may be relied upon as supporting our conclusions herein reached.

Appellant also relies upon the doctrine laid down in Mason v. Hepburn, supra, in which is found the following statement of the law:

Considering, then, this paramount interest of the public in its bearing upon the question as presented here, we think it imperatively demands that a subsequent inventor of a new and useful manufacture or improvement who has diligently pursued his labors to the procurement of a patent in good faith and without any knowledge of the preceding discoveries of another, shall, as against that other, who has deliberately concealed the knowledge of his invention from the public, be regarded as'the real inventor and as such entitled to his reward.” (Italics ours.)

It will there be observed that the court found that there was a deliberate concealment. There is no such contention here.

Appellee being the first to conceive and the first to reduce to practice, and the record as a whole being devoid of any fact or circumstance barring him from a patent, he was properly awarded priority, and the decision of the Board of Appeals is affirmed.

Affirmed.


author: LENROOT, Associate Judge.

text:
    MONTEVALLO COAL MINING CO. v. LITTLE GEM COAL CO.
    Patent Appeal No. 2650.
    Court of Customs and Patent Appeals.
    April 15, 1931.

      H. C. Robb and J. F. Robb, both of Washington, D. C., and V. J. Nesbit and W. H. Sadler, Jr., both of Birmingham, Ala. (Robb & Robb, of Washington, D. C., and Nesbit & Sadler, of Birmingham, Ala., of counsel), for appellant.
    Harry H. Semmes, of Washington, D. C., and W. Douglas Arant, of Birmingham, Ala. (Semmes & Semmes, of Washington, D. C., and Bradley, Baldwin, All & White, of Birmingham, Ala., of counsel), for appellee.
    Before GEAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   LENROOT, Associate Judge.

This is an appeal from a decision of the Commissioner of Patents affirming a decision of the Examiner of Trade-Mark Interferences, sustaining the opposition of appellee to the registration of the trade-mark “Montevallo” and denying registration thereof.

The application here in issue was filed on February 2, 1927, and is for registration of said mark under the ten-year proviso of the Trade-mark Act of February 20, 1905 (15 USCA § 81 et seq.). In said application appellant declared that the name “Montevallo” was in actual and exclusive use as a trade-mark by it or its predecessors for the ten years next preceding February 20, 1905. Appellant is engaged in mining coal at Aldrich, Ala., from a seam of coal known as the “Montevallo Seam” and selling such coal in several states in the south.

The opposition is based upon the lack of exclusive use by appellant of the word “Montevallo” in connection with coal during said ten-ydar period, it being alleged that others had used this word during said period to identify coal similar to that produced by appellant. It is further alleged in the notice of opposition that appellee itself was .using this word to designate its own coal, such use, however, beginning subsequent to said ten-year period during which time appellant claims to have had exclusive use.

The record shows that on December 4, 1923, the mark here in issue was registered pursuant to an application filed by appellant’s predecessor, Montevallo Mining Company. This registration was granted m-der said Act of February 20, 1905, but not under the ten-year clause thereof which is here involved. Thereafter, appellee herein petitioned for the cancellation of said mark, and on March 10, 1927, the same was canceled after a decision by the District of Columbia Court of Appeals, affirming a decision by the-Commissioner of Patents canceling the registration of said mark. Montevallo Mining Co. v. Little Gem Coal Co. et al., 57 App. D. C. 100, 17 F.(2d) 688.

Both parties took testimony, and by stipulation of the parties the record in said cancellation proceeding was made a part of the record herein.

On November 3,1928, the Acting Examiner of Interferences rendered a decision dismissing the opposition and adjudging that appellant was entitled to registration of the mark applied for.

On November 23 following, appellee filed a motion for a rehearing, which was granted. On February 27, 1929, the Aeting Examiner of Interferences rendered a decision sustaining the opposition and adjudging that appellant was not entitled to the registration of the mark for which it had made application. Upon appeal to the Commissioner, said decision of the Acting Examiner of Interferences was affirmed, and from said decision the appeal now before us was taken.

In its brief, and upon oral argument, appellant urged several grounds of reversal, one of which was that' error was committed in granting the rehearing above referred to. It is conceded that the motion for rehearing was filed within the time provided for by the rules of the Patent Office, and it was clearly within the discretion of the Aeting Examiner of Interferences to grant the motion. In the decision of the Aeting Examiner of TradeMark Interferences upon which a rehearing was sought, it was stated:

“ * * * While opposeris testimony does establish a limited use of the word Montevallo in connection with coal by certain third parties between the years 1895 and 1905 in a manner to suggest to the public that this coal was a product obtained from the vicinity of the Montevallo coal region, it does not appear from'this testimony that any trade-mark rights have been claimed by such third parties in the use of this word, nor does it appear that any one except the applicant herein has actually used the word ‘Montevallo’ as a mark to indicate origin. * * * ”

We assume that the word “origin,” as there used, was meant to indicate origin in the producer and not geographical origin. With this construction it is clear that with the facts found the Examiner made an error of law, for as will hereafter appear, if parties other than appellant had used the name “Montevallo” during said ten-year period to suggest to the public that the coal sold by them was a product obtained from the vicinity of the Montevallo coal region, then the opposition should have been sustained.

The Commissioner committed no error in holding that the granting of the motion for rehearing by the Acting Examiner of Trade-Mark Interferences was proper.

Another contention made by appellant is that, unless appellee can show that during said ten-year period it had actual trade-mark use of the name “Montevallo,” or a use analogous to trade-mark use, it cannot prevail in this court.

Appellant cites no authorities holding that an opposer, in order to prevail in a proceeding of the character before us, must show use by him of the mark, either as a trade-mark, or a use analogous to trade-mark use, prior to February 20,1905, and we have found no such authorities. On the contrary, the rule seems to be established that in a tra¿e-mark ease in which opposition to registration is made on the ground that the applicant was not the exclusive user of the mark for ten years prior to February 20, 1905, he, the applicant, must show exclusive use during said ten-year period. C. A. Gambrill Manufacturing Co. v. Waggoner-Gates Milling Co., 38 App. D. C. 532; Worster Brewing Corporation v. Rueter & Co., 30 App. D. C. 428. In the case last cited it wasi held that “an actual use must be shown to have been possessed and enjoyed by the applicant to the sole exclusion of all others.” (Italics ours.)

In the ease of William Wrigley, Jr., & Co. v. Norris, 34 App. D. C. 138, which involved an opposition to registration under said ten-year clause, it was held, quoting from the syllabus:

“Where an application for registration of a trademark is regular in form, the applicant is entitled to registration unless his prima facie case is overcome by the evidence on behalf of one opposing the granting of the application, in which event it is incumbent on the applicant to establish his right to registration by a fair preponderance of testimony.”

It was incumbent upon appellee to allege and show an interest in the subject-matter of appellant’s application from which damage may be inferred. McIlhenny’s Son v. New Iberia Extract of Tobasco Pepper Co., Limited, 30 App. D. C. 337; California Cyanide Co. v. American Cyanamid Co., 40 F.(2d) 1003,17 C. C. P. A. 1198. This appellee has done; it has shown a use of the mark here in question at the time of the filing of appellant’s application, inconsistent with a trade-mark use of the same by appellant, and it was not necessary for it to show such use by it during the ten-year period preceding February 20, 1905. Appellee was entitled to show, if it could, that said mark was not in actual and exclusive use as a trade-mark by appellant or its predecessors during the ten years next preceding February 20, 1905, and, under the decisions heretofore cited, it was necessary only that appellee overcome theprima faeie ease, arising from appellant’s sworn application, that such mark was so used by it. If such prima faeie ease was rebutted, the burden was upon appellant to establish by a preponderance of the evidence such exclusive use.

This brings us to a consideration of the evidence found in the record upon the question of such use. The record is voluminous, comprising nearly one thousand pages, and no useful purpose would be served by reviewing it in detail.

It appears that in 1823 there was laid out in the state of Alabama a town to which was given the name of Montevallo. Later on, the valley in which the town is situated was known as the Montevallo Valley. Still later, coal was discovered in the neighborhood, and when mined, was shipped from the railroad station at Montevallo. Later, a particular seam of coal, from which both parties herein produce their coal, came to be known as the Montevallo seam, which seam extends through the properties of appellant and appellee and the properties of other parties not connected with this proceeding.

'For a number of years appellee has sold its coal under the name of “Montevallo” or “Dogwood Montevallo” coal, but there is no evidence that it or its predecessors were so selling coal prior to February 20, 1905. The testimony introduced by appellee, we think, prima facie established that, during said ten-year period, parties other than appellant sold coal produced from said seam under the name of Montevallo, or under such name coupled with another word, but in a way that would be in conflict with appellant’s trade-mark “Montevallo” if it had been a technical trade-mark. If there be any doubt as to this being the proper conclusion from the testimony introduced by appellee, such doubt is removed by the testimony of some of appellant’s witnesses.

I). A. Thomas, president of the appellant company, testified upon cross-examination as follows:

“Q. You wouldn’t testify, would you, that no company other than the company at Aid-rich had not sold any coal as Montevallo during the period, say eleven years prior to February, 1905? A. No, I would not.
“Q. In fact, you do know that Mr. Hendrix during that period sold coal and called it Dogwood Montevallo, or Montevallo Dogwood? A. Yes.”
C. P. Anderson, a witness on behalf of appellant, testified upon cross-examination as follows:
“Q. Now, you testified in this cancellation proceeding when the' Little Gem Coal Company brought the proceeding against Montevallo Coal Company to cancel the trade mark ‘Montevallo,’ didn’t you? A. Yes.
“Q. I am looking at page 379 of the record of the Court of Appeals of the District of Columbia, which shows your testimony, beginning at page 428, and indicates on page 379 that testimony was taken on August 26, 1924. On page 44 this question was asked, ‘Q. 153. Go ahead and finish your answer and then I’ll ask you another question. A. 153. Something like 29 or 25 years ago, as I stated, Mr. L. W. Hunter, who was living in Montgomery, got into the coal business, and Dogwood not being far from the Town of Montevallo, he advertised Montevallo coal. At that time I took it up hath Mr. Smith. That was before Molton Smith had anything to do with Dogwood. He had a retail yard in Montgomery. He advertised it that way but they soon stopped him.’ That is correct? A. Yes.
“Q. In other words, that testimony was in 1924, and it was 20 or 25 years before that this man Hunter was selling his coal as Montevallo, back prior to 1905? A. Yes.
“Q. That is your best recollection? A. Yes.”

The witness further testified on re-direct examination as follows:

“Q. He asked you about a man named Hunter advertising coal as Montevallo coal. Hunter was a local dealer in Montgomery, wasn’t he? A. Yes.
“Q. And he did that a short time and you say he was stopped? A. I don’t remember whether he was stopped or not. He didn’t stay in business but about a year and a half; I am sure not over two years.
“Q. What Mr. Smith did you take it up with? A. I don’t know unless it was the State Geologist. He is the only one I know of, over at the State University.
“Q. And some time following some objection from you, the man either went out of the business, or stopped advertising his coal as Montevallo coal? A. Yes. He was a farmer and came in and went into the coal business, and lost what he had in it.” •
On reeross examination, the witness further testified as follows:
“Q. The controversy you were having with him was about the name ‘Montevallo’? A. Yes.
“Q. He was using it and you were objecting? A. Yes.
“Q. And he wasn’t selling coal from Aid-rich?' A. No.
“Q. What year was that, 25 to 30 years ago ? A. I don’t remember the year.
“Q. That was in the town of Montgomery ? A. Yes, Montgomery.”

Appellant complains that appellee has furnished, no documentary evidence in support of its allegations that appellant did not have the actual and exclusive use of said mark during said ten-year period. There is found in the evidence introduced by appellee a letterhead which the witness Duncan, testifying on behalf of appellee, testified “was from a letter written to him in 1901 by a Mr. Simmons, connected with the MontevalloDogwood Coal Company, not a predecessor of appellant. This letterhead contains, below the name of the company, the following: “The Celebrated Montevallo Red Ash Coal.”

We would observe, in this connection, that appellant waited for more than twenty years before seeking registration under said ten-year clause of the Trade-Mark Act. This, of course, it had a right to do, but documentary evidence of happenings twenty years before the time of trial is naturally much more difficult to secure than if so long a "period had not intervened.

We are in accord with the findings of the Patent Office tribunals that appellant did not have the exclusive use as a trade-mark of the word “Montevallo”! during the ten years immediately preceding February 20, 1905.

But one question remains to be considered, and that is appellant’s contention that the Commissioner erred in refusing to consider the alleged unfair trade practice of appellee following the cancellation proceeding.

This charge that appellee comes into this proceeding with unclean hands is based upon an advertisement which it caused to be inserted in the Birmingham Age-Herald following the cancellation of appellant’s mark by the Commissioner of Patents in the cancellation proceeding hereinbefore referred to. We have carefully examined such advertisement and find no material misrepresentation of facts therein. In view of the previous representations of appellant as to its exclusive right to the mark, disclosed by the record, we think appellee had the right to advertise the fact that appellant’s mark had been canceled. We do not believe there is anything in said advertisement to convey the impression that appellee was claiming the exclusive right to the use of the word “Montevallo” upon coal which it mined from the Montevallo seam, but only that it had an equal right with others so mining coal to use the word “Montevallo” as indicating the geographical origin of the coal.

The decision of the Commissioner of Patents is affirmed.

Affirmed.

BLAND, Associate Judge, concurs in the conclusion.


text:
    In re PEDDRICK et al.
    Patent Appeal No. 2652.
    Court of Customs and Patent Appeals.
    April 15, 1931.
    Theodore K. Bryant, of Washington, D. C., for appellants.
    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.
   BLAND, Associate Judge.

The invention involved in this appeal from a decision Of the Board of Appeals of the Patent Office, which affirmed the action of the Examiner in rejecting appellants’ claims 7 and 8, relates to a process for the preparation of feldspathie flux for porcelain. Claims 7 and 8 are as follows:

“7. The process of producing feldspathie flux for porcelain consisting in separately crushing different batches of feldspathie rock containing mica, analyzing a sample of each of the separately crushed rocks, delivering the crushed rock to different points' of storage in accordance with the results of such analyses, combining predetermined quantities of the. crushed rock from any selected point of storage with the necessary quantity and kind of material in which said rock is deficient, pulverizing and mixing the combined crushed rock and material, and then removing the mica particles from the pulverized mixture.
“8. The process of producing feldspathie flux for porcelain consisting in crushing feldspathie rock containing mica, analyzing a sample of the rock after being crushed, combining predetermined quantities of the crushed rock with the necessary quantity and kind of material in which said rock is deficient, pulverizing and mixing the combined crushed rock and material, and then removing the mica particles from the pulverized mixture.”

The references relied upon are: Pohl, 1,103,375, July 14, 1914; Eckel, Cements, Limes & Plasters (2d Ed.) 1922. (Wiley, New York), pages 292, 369, 370.

In order that we may understand the ground of rejection on the part of the board, we quote the main part of its decision:

“This application relates to the preparation of stock from feldspathie rock for use in the porcelain industry. The rock is crushed and analyzed after whieh the material is stored in separate bins, each bin containing material having substantially the same characteristics as indicated by the analysis; also undesirable mica particles are removed from the crushed material.
“In this industry it is necessary to fur-, nish feldspathie rock having certain characteristics for certain purposes and in the past it has been the custom, as stated by appellant, to take samples of the rock and then subject it to the usual treatment followed in manufacturing the articles in order to ascertain what the final product will he. Rock material coming from substantially the same source was then presumed to have about the same characteristics. It would appear that there is a great deal of variation in the rock, even when coming from the same mine. By appellants’ method it is possible to furnish manufacturers with exactly the kind of material whieh they desire as the stock may be taken from different bins and mixed to produce a blend whieh will have the desired characteristics.
“The examiner is unable to show that this has ever been done and appellant urges that it is a great commercial success and much superior to the old methods. We do not doubt appellants’ statement in regard to this but in our opinion the industry has been lax in not employing ordinary scientific and engineering skill in handling this material. Certainly it is old in many other arts to blend stock together having different characteristics in order to produce the desired product. As one instance of this the examiner calls attention to the Eckel publication which describes this manner of handling and preparing cements. It is thought that an engineer trained in the preparation of cement should recognize the analogy in preparing stock of the nature under discussion. In both instances rock is ground up and both relate to the ceramic industry and are therefore quite analogous. Also, as shown in the patent to Pohl, it is old in the magnesite industry to produce mixtures based upon analysis of stored stocks. This is another instance of a practice that is doubtless common in various branches of the art of this general nature. None of the specific details of the claims are regarded as involving patentable distinction.”

Appellants here argue that the board erred in the rejection of the claims, for the reason that the method disclosed is new as applied to the preparation of any mineral substance or material, and especially is it new in the art of preparing feldspar, and that, since the steps of appellants’ method have never been followed, in the order enumerated, in the process of preparing any kind of material in any prior art, and since these steps when so applied have produced a new and highly beneficial result, it necessarily required invention and discovery to produce the method.

Feldspar or “spar,” as it is commonly ealled by feldspar miners, is a crystal rock forming part of certain igneous rock structures found in the United States chiefly east of the Alleghany Mountains, and the feldspar of commerce is obtained from pegmatite dikes which contain feldspar and quartz, mica and certain other mineral substances. The uses of feldspar are, according to a report of the United States Department of Commerce, Bureau of Mines, entitled “Feldspar in 1928, Mineral Resources of the United States, 1928 — Part II, pages 67-80,” at page 70, as follows:

“Uses
“The chief use of feldspar is as a constituent of both body and glaze in pottery, porcelain, white ware, vitrified sanitary ware, and enameled brick. Feldspar constitutes 10 to 35 per cent of the body of vitrified wares, in whieh it acts as a flux to bind the particles together. Glazes contain 30 to 50 per cent of feldspar. Enamels applied to metals are fused with feldspar. Bath tubs and wash bowls are commonly made of cast iron to which while hot an enamel containing much feldspar is applied.
“Glass máking is another branch of the ceramic industry in whieh feldspar is used. • • •
“ “Feldspar is also used as an abrasive in scouring soaps.”

The above published report indicates that feldspar has many other uses, and that its fitness for all of its uses is for the most part dependent upon its analysis, that is to say, it must contain certain ingredients in different percentages for one use and ingredients of different and varying percentages for other uses, that it has always been very difficult to secure commercial feldspar of the chemical composition desired, and that the manufacturer using this ingredient has had to make his own analysis and mixtures, which ofttimes resulted in great loss of time and material.

From the same authority we quote the following:

“* '* * Potters usually'demand a uniform product, the composition of which is constant from day to day. In view of the variations mentioned above this requirement is somewhat difficult to fulfill, and the best thought of the industry is being directed toward means of overcoming these difficulties. * *' » « * *
“Progressive feldspar producers and grinders are attempting to overcome the inherent lack of uniformity in their raw materials by employing technical control.”

It seems to be conceded in this ease that the process proposed by appellant solved the problem of technical chemical control, so that now under this process, which is being used extensively in the production of commercial feldspar, a user of feldspar may order a carload with the assurance that, when it arrives, it will be uniformly mixed, each portion of it having an analysis exactly in accordance with the order, and that such a mixture, on account of its definitely determined analysis, is found to be suitable for his manufacturing requirements without further mixing the same or making additions thereto.

It will be observed that claim 7- calls for six steps:

“1. Separately crushing different batches of feldspathic rock containing mica.
“2. Analyzing a sample of each of the separately crushed rocks.
“3. Delivering the crushed rock to different points of storage in accordance with the results of such analyses.
“4. Combining predetermined quantities of the crushed rock from any-selected point of storage with the necessary quantity and kind of material in which said rock is deficient.
“5. Pulverizing and mixing the combined crushed rock and material.
“6. Removing the mica particles.”

Claim 8 does not include the third step, and, when the ease was presented to this court in argument, the impression was given by both sides that the only difference between claim 8 and claim 7 was that in claim 8 step 3 of claim 7 was omitted, and it was argued by appellants that the omission of this step, if the other steps of claim 7 were followed, would not render claim 8 unpatentable. An examination of claim 8 discloses that it does not contain the first two steps of claim 7 which provides for separate crushing, and for analyzation of the separately crushed rock. It does-provide for “combining predetermined quantities of the crushed rock with the necessary quantity and kind of material [etc.].” We believe claim 8 reads on the prior art, and for that reason is objectionable.

From the contention of appellants, we conclude that the really important part of the process is separately crushing and analyzing each of the grades of rock, which grades are determined as the rock comes from the mine. Since different rock coming from different parts of the mine has a different analysis, it is important to- separately analyze and determine the contents of each class of rock, and then, knowing the analysis of each class, a carload of feldspar of a certain analysis, desired by a manufacturer, may be obtained by mixing a sufficient quantity from different separately analyzed batches of material, to make a mixture of the desired percentage. The process is chiefly based upon the proposition that, knowing the percentage of feldspar in each separate batch, a batch of any predetermined analysis may be obtained by means of calculation.

The method most generally employed prior to the method proposed by appellants is set out in appellants’ brief. The correctness- of the statement is abundantly supported by various authorities cited, and is not disputed in the trial of this cause, and follows:

“Heretofore it has been customary to take the material as it comes from the mine in large lumps and hand pick it to remove all visible mica, garnet and other substances undesirable in porcelain, glass or other ceramie products. Also, the outward appearance of • different feldspars differs and a rough sorting out of the undesirable forms of feldspar has also been done by hand. There then remains a mass of feldspar of unknown composition which is assumed, from typical analyses of the kind above mentioned and from the judgment and experience of the mill foreman to require certain amounts of quartz or feldspar or both to bring it to the grade desired. These amounts are added and the mixture is ground. Test cones are then made and fired just as the articles of porcelain are fired in a suitable kiln. From the behavior of these test cones the grade of the mixture is determined and, if not satisfactory an additional quantity of an ingredient or of ingredients may be added as the experience of the operator has found probably desirable. Sometimes attempts are made to check the grade before grinding by picking lumps at random from the feldspar, after it has been picked over to remove mica and the other impurities, and getting an average chemical analysis of these lumps.”

The Board concedes the commercial success of appellants’ method, which success is represented to be almost revolutionary, and, further, concedes that the Examiner was unable to show that this process had ever been followed before. The Board concluded that it was old in many other arts to blend rocks having different chemical qualities in order to obtain a mixture of a certain analysis and that the particular steps proposed by appellants, even though new in the order of their application, required nothing more than scientific and engineering skill.

The reference Pohl relates to a process of making sintered magnesite and dolomite in which the raw materials are ground to make a powder or mud. The powder or mud is then mixed in silos or settling tanks and left to settle or separate according to its degree of purity and is then divided into different batches of different degrees of purity. Analyses are made of the various powders or muds and from these analyzed batches a combination is made. Then the same is burned and the desired article produced. In Pohl there are but -five steps, the first of which is grinding. There is no step of removal of the mica particles. It is urged here that grinding is not practicable as the first step in preparing feldspar and that the process of Pohl could not be satisfactorily applied to the feldspar art in view of the necessity for the removal of the mica particles which, ordinarily, is done magnetically and could not be successfully done after the wetting process had been applied.

In Eckel’s book the method of control for maintaining a determined standard of composition in more than one raw material is to analyze both raw materials, mix the two according to analyses, grind the Same, and then, if the same is not of the proper composition, add the necessary ingredients. It is at once apparent that this is not the detailed method of appellants nor its equivalent, since the raw material in appellants’ method, all coming from one mine, is separated into several different batches before it is analyzed, thus affording, ofttimes, a great number of batches of different chemical analyses which renders mixing to a predetermined analysis a matter of easy computation.

But, it is thought by the Board that the differences in the steps of the processes of the references and those of appellants do not amount to invention. The fact that' the feldspar art is an old one and that the method of claim 7, which is so successful, had never been practiced before would at least seem to point in the other direction.

The Solicitor for the Patent Office, citing McClain v. Ortmayer, 141 U. S. 419, 12 S. Ct. 76, 35 L. Ed. 800, argues that commercial success, while evidence of utility, is not conclusive as to patentable novelty. While this is a correct statement of the law, in ease of doubt commercial success is not only evidence of utility, In re Husted, 39 F.(2d) 713, 17 C. C. P. A. 1002, but is persuasive of invention, In re Sehierholtz, 45 F. (2d) 283, 18 C. C. P. A.-. In the case at bar we are impressed with the fact that appellants, by their method in claim 7, have contributed to and greatly advanced the art of feldspar production, and, while the ease is not so clear as to remove all reasonable doubts as to the patentable novelty of the same, we feel constrained to resolve such doubts in favor of the applicants. That this is the correct application of a well-settled rule needs no extended citation of authorities.

It should not be overlooked that claim 7 here calls for a patent for steps in a process and that the authorities have gone far in extending protection to an inventive process even though each of the steps were old, if the steps were so related to each other as to bring about a new and useful result. German-American Miter Co. v. Erdrich (C. C.) 98 P. 300. The fact that the process may seem very simple is immaterial United States Mitis Co. v. Midvale Steel Co. (C. C.) 135 M 103.

By the foregoing we do not wish to be understood to hold that all methods, the individual steps of which are old, but which, by new arrangement, bring about new and useful results, are patentable. The result might be obvious, and therefore not the result of invention. We do not regard the method of claim 7 at bar as falling with this class.

The decision of the Board of Appeals is reversed as to claim 7 and affirmed as to claim 8;

Modified.


text:
    In re PROSSER.
    Patent Appeal No. 2668.
    Court of Customs and Patent Appeals.
    April 15, 1931.

      Morrison, Kennedy & Campbell, of Washington, D. C. (Harold Olsen, of Washington, D. C., 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.
   GRAHAM, Presiding Judge.

Appellant filed an application in the Patent Office for a patent upon an alleged invention relating to hosiery drying and shaping structures. His device, as disclosed, consists of a form to be used for stretching and drying hosiery, which is attached to' a pipe by means of which steam, or other-heating element, may be introduced into the form. The form is attached to the pipe conveying the heat element by an intermediate coupling. This coupling is disposed in such a way as to cause the form to stand in an angular position with regard to the supporting heat carrying pipe. The device is particularly for use in manufacturing establishments where hosiery must be stretched and dried in large quantities, and the idea of the inventor is that the operator who attends to placing hosiery on these forms and removing them will be better able to do this work in an efficient way if the forms carrying the hosiery are disposed in an angular way, so that, as the operator proceeds along a row of these forms, the toes of the forms will be inclined in an angle in the direction in which the operator is proceeding.

The only part of the hosiery heating and drying device here involved is the coupling which unites the form to the heat pipe. Nothing new is claimed as to the form itself. The form has a base consisting of an oblong rectangular portion, grooved along its bottom surface longitudinally. Recesses above this oblong portion, in the form, are provided for bolts to hold the form to the coupling portion. The coupling member consists of three portions, namely: An upper oblong, rectangular portion, convex upon its upper surface, to fit the said groove in the form; a lower oblong portion grooved on its bottom surface, longitudinally, to fit the heat pipe and convex on its upper surface; a central or connecting portion, oblong in shape, of less length than the two end portions, with its longitudinal axis identical with the upper portion, but angular with the said axis of the lower portion, of the coupling member. This coupling member has openings through it to conduct the heating element, and is provided with bolt holes for ■ attachment to the form and to the heat pipe.

Fourteen claims were filed with the application, all of which were rejected by the Examiner on the following references: Anthony 550,470, November 26, 1895; Collis, 1,114,966, October 27, 1914; Reeps, 1,464,-539, August 14, 1923. On appeal this decision was affirmed' by the Board of Appeals of the United States Patent Office, and an appeal was taken to this court.

For the purposes of this decision two claims are here given, which seem to be typical of the two classes of claims in the application:

“1. A form coupling-device including a form-attaching portion and a conduit-attaching portion, one portion being turned relative to the other about an axis passing through both portions.”
“8. A form coupling device comprising an elongated form-attaching portion having a semi-cylindrical surface, an elongated pipe-attaching portion provided with a longitudinal groove, and a connecting section between the portions, the device involving a distortion intermediate its extremities by turning one of the portions relative to the other about an axis passing through both, these portions and the section being provided with a plurality of channels.”

We have examined with some care the references cited. Anthony shows a steam glove drying and forming apparatus. His apparatus has a connection which is adjustable and is composed of two cylindrical pipe portions, one of which is threaded into the other and which San be turned as desired by the operator.

The reference Collis shows a form which is connected to the heating element by a flanged base piece elliptical in form, and which connection is attached to the form and to the heating element, but which has no distortion intermediate of it's end portions.

Reeps shows a two-piece tube connection where the form may be turned by means of turning these tubular section pieces, one within the other.

The Board of Appeals cited, in addition to the other references relied upon by the Examiner, a patent to Upp, No. 1,106,260, of August 4,1914, and this reference is said by the Board to anticipate all the claims in the application.

The Upp reference shows a hosiery form, made in a similar manner to that of appellant here, and disposed on a heating pipe at right angles thereto. The form is in two parts, as is the form of appellant, being divided about midway of the leg portion. The base portion, however, is in one section and has no connecting part with the heat pipe. In fact, the heating element is shown by the drawings to pass through the base of the form. It is quite evident, from an inspection of the drawings and specification, that the base portion of the form of Upp is rigid, is east in one piece, and has no connecting’portion of any kind with the heating pipe, but simply an orifice through which the heating pipe is inserted.

We cannot agree with the Board of Appeals that the references cited anticipate appellant’s coupling device. The form of his coupling, as hereinbefore described, especially with regard to the distortion or change of angles, between the lower and upper portions thereof, is not found in any of the references. The twisting of one pipe within another, as in Anthony and Beeps, cannot be said to be “a distortion intermediate its extremities.” Appellant’s disclosure and elaims rest upon a coupling of one member. Anthony and Beeps have two. Collis has one, not distorted. Upp has none. The appellant’s device, therefore, is patentable.

The decision of the Board of Appeals is reversed.

Reversed.


text:
    In re PROSSER.
    Patent Appeal No. 2669.
    Court of Customs and Patent Appeals.
    April 15, 1931.
    Morrison, Kennedy & Campbell, of Washington, D. C. (Harold Olsen, of Washington, D. C., 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, GABBETT, and LENROOT, Associate Judges.
   BLAND, Associate Judge.

Appellant’s alleged invention involved in this ex parte appeal from the decision of the Board of Appeals of the Patent Office, which decision affirmed the decision of the examiner, relates to a hosiery drying and shaping machine in which drying forms are internally heated by steam coming through a conduit at the base of the form. The- object of the invention is to facilitate “boarding” hose, after they have been knit and washed, so that they will dry while in the proper shape and be properly creased.

It has long been the general practice to “board” hose upon drying forms which were either directly heated by conducting heat into. the forms or by heating the forms and stockings in a drying box. The forms were so arranged that their sides were in alignment in the same vertical plane, that is to say, the toe of the form pointed in the direction of the conduit which presented the side of the foot of the stocking to the operator whose duty it was to place said wet stocking on the form, smooth out the creases and wrinkles, and remove the stocking when dry.

The inventive feature claimed for appellant’s device is in twisting the form about an axis passing through the form and its base. When applicant’s device is used, the operator may easily see the front and back of the stocking and will have more room and less chance of being burned by the adjacent hot form while manipulating the stocking.

The drawing of the application indicates that the toe of the stocking projects outwardly from the drying frame", and the case is argued in this court as if this feature were part of the invention. The specification and claims, however, do not require that appellant’s structure have the toe pointing outwardly. In view of our conclusion we regard thi's as being an immaterial matter.

The rejected claims all are drawn to cover the relative turn or" twisting feature of the hose drying structure and elaims 1 and 4 aro regarded as illustrative and follow:

“1. A hosiery-drying structure including a coupling-component and a drying and shaping component, one component being turned relative to the other about an axis passing through both components.”
“4. A device of the class described including a hosiery-drying instrumentality twisted about its longitudinal axis.”

The references relied upon by the Board are: Anthony, 550,470, November 26, 1895; Pease, 568,874, October 6, 1896; Upp, 1,106,-260, August 4, 1914; Collis, 1,114,966, October 27,1914; Keeps, 1,464,539, August 14, 1923. Anthony and Collis were the references relied upon by the Examiner.

We have very carefully considered the pertinency of the references, and no useful purpose could he served by here describing and discussing them. It is sufficient to say that it is our opinion that the combined references disclose everything claimed or disclosed by applicant, including the projection of the toe of the form outwardly. While it may he plausibly argued that no one reference discloses the entire disclosure of applicant, it is not thought that there was any patentable invention in taking certain features out of certain patents and combining them into another device.

We are, therefore, of the opinion that the references cited fully and completely anticipate applicant’s claimed invention, and the decision of the Board of Appeals is affirmed.

Affirmed.


text:
    In re SHETTERLY.
    Patent Appeal No. 2670.
    Court of Customs and Patent Appeals.
    April 15, 1931.
    Vernon M. Dorsey, of Washington, D. C., for appellant.
    T. A. Hostetler, of Washington, D. C., for Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   BLAND, Associate Judge.

This is an appeal from the decision of the Board of Appeals affirming the action of the Examiner in refusing to allow a patent for “the ornamental design for sheet glass as shown.”

The so-called design is to he found on one surface of glass such as is ordinarily used in office partitions, etc., and has for one of its purposes the obstruction of the rays of light so as to make the glass translucent rather than transparent.

The reference cited by the Examiner and the Board of Appeals is Burgess (design) 18,647, October 2, 1888, for wall paper.

In the rejection of the claim of the application by the Examiner, he assigned two reasons: (1) The article fails to present a definite design, citing Harmon Paper Co. v. Kimberly (D. C.) 289 F. 501. (2) From an ornamental standpoint it is not sufficiently distinctive over the reference to justify patentability.

The Board of Appeals for the same reasons affirmed the action of the Examiner, and in closing its decision said: “We think the article fails to present a definite design and, from an ornamental standpoint we think it is not sufficiently distinctive over the reference to justify patentability.”

The fact that it is not a distinctive design. makes its description difficult. The applicant describes it in the following language: “A design to be applied to one face of a glass sheet, such as used in office partitions, etc., and which may therefore be seen by transmitted light. It is formed by placing corrugations, more or less sinuous and parallel, on one side of the sheet.”

The Examiner, in his attempt to describe it, says: “Applicant’s alleged design consists of a series of wavy lines without any definite 'motif.’ ”

The Board of Appeals describes it as follows: “Appellant’s design, as disclosed in his drawing, shows a surface of parallel wavy lines of variable thickness, the thickened portions being irregularly spaced along the lines and frequently being adjacent a thickened portion of the next adjacent lines, thus forming a mottled appearance of light and dark spots of irregular outline.”

It is clear from the above descriptions that it is going to be very difficult to set out here by the use of language only such a description of the proposed design as will permit the reader to form a mental picture of the same. The drawing is not very helpful, since it shows only heavy black and white nearly parallel lines. There are places where the ends of the lines overlap and short intervening lines are also used to give a mottled effect. This overlapping and the intervening lines give the effect of making a surface with irregular spots.

Fortunately we have before us a piece of the glass which contains the so-called design and which differs in appearance from the drawing. The glass is smooth on one side, and on the other there are very slight indentations, irregularly placed, which make the glass slightly thinner in certain places than it is in others. These indentations are so numerous and irregularly spaced as to be incapable of being definitely described or located. They are, however, apparent to the eye when the glass is turned in certain directions, and their presence may be ascertained by passing the hand over one surface of the glass. In addition to the indentations on the surface of the glass above referred to, there is a series of short wavy lines, all running in one general direction, and for the most part parallel, giving an impression to the eye similar to that which would result if a stubby brush was passed over the surface of the glass when in a partly molten condition, the brush being raised and again replaced frequently in its movement across the face of the glass.

The record does not disclose how the design is made, and agreeable to Gorham Co. v. White, 14 Wall. 525, 20 L. Ed. 731, we regard this as of no consequence in determining the issue of the ease. The fact that the manner of its construction is difficult of determination, and that its reproduction would be difficult, if not impossible, by any one, although skiüed in the art, unless he had the models or brush or particular instrumentalities which produced it, has a bearing upon the proposition that the article is lacking in definite design. In re Stirling, 47 F.(2d) 809, 18 C. C. P. A. —:.

It is not suggested by appellant whether the design is one of configuration of the piece of glass or is an ornamental design applied to the surface of the glass, or is both. In any event, we do not think it is the kind of distinctive ornamental design, the invention of which Congress sought to encourage when it enacted the design patent statute.

In the reference Burgess the lines are more curved than in the drawing of the design at bar. The whole appearance of the Burgess design, although composed of substantially parallel wavy blaek lines, overlapping at the ends, on a .white background, is somewhat different from the appearance of the drawing of the design at bar, and yet we agree with the conclusion of the Board and the Examiner that there is no patentable ornamental distinction between them.

During the argument before this court, it was suggested that appellant’s claim could not be allowed for the reason that it called for a structure which performed a function. This question was not considered by the tribunals below, and, since we agree with them on their reasons for rejection, it is not neesary for us to consider this question.

The decision of the Board of Appeals is affirmed.

Affirmed.