(Snrnpll Haui ^rl^nnl IGibrary 
 
Cornell University Library 
 KF3142.S59 
 
 The law of design patents xontaining al 
 
 3 1924 019 246 580 
 
Cornell University 
 Library 
 
 The original of tiiis book is in 
 tine Cornell University Library. 
 
 There are no known copyright restrictions in 
 the United States on the use of the text. 
 
 http://www.archive.org/details/cu31924019246580 
 
THE LAW 
 
 OF 
 
 DESIGN PATENTS 
 
 CONTAINING 
 
 ALL REPORTED DECISIONS OF THE U. S. COURTS AND THE 
 PATENT OFFICE, IN DESIGN CASES, TO A, D. 181i. 
 
 "WITH DIGESTS AND TREATISE. 
 
 BT 
 WILLIAM EDGARJIMONDS, 
 
 COBUSELLOE AT " 
 
 NEW YORK: 
 BAKER, VOORHIS & CO., PUBLISHERS, 
 
 66 Nassau Stbebt. 
 1874. 
 

 Entered according to Act of Congress, in the year 1874, by 
 
 BAKER, VOORHIS & CO., 
 In the Office of the Librarian of Congress, at Washington. 
 
 Bakeh & GhDDWIN, Prihtebs 
 S5 Park Row, New York. 
 
PREFACE. 
 
 Those members of the profession who have had occasion 
 to give any considerable attention to design-patent matters, 
 must have experienced difficulty in ascertaining just how 
 much and what has been done toward settling the status of 
 these patents. The decisions in the Patent Office have been 
 conflicting, and the court cases are not altogether harmonious. 
 
 Fortunately, the Supreme Court has had occasion, of late, 
 to pass somewhat fully upon a design-patent cause, and it 
 seems an opportune time to collect the cases, digest them, and 
 present them, with deductive comments, to the profession, in 
 a single volume. 
 
 •The syllabus of each case has been written anew, generally 
 with greater fulness than in the original reports, and using, 
 when practicable, the exact language of the judges. 
 
 The field covered is not a large one, but is rapidly growing 
 in importance. An efibrt has been made to render the work 
 thorough, accurate, and reliable, and thereby discharge, in 
 some small measure, the debt that each member is proud to 
 acknowledge that he owes to the profession at large. 
 
 Wm. Edgae Simohds. 
 Ewrtfard, 1874. 
 
CONTENTS. 
 
 Table of Cabeb • vii 
 
 PAET I. 
 
 collection of all the reported cases, bearing upon letters 
 patent for designs, decided in the U. S. Courts, to Jan- 
 uary 1, 1874. With specifications and drawings of the 
 patents in issue 
 
 PAET II. 
 
 A collection of all the reported 'cases, bearing upon letters 
 patent for designs, decided in the U. S. Patent Office, to 
 January 1, 1874 59 
 
 PAET m. 
 
 Digest of all the reported cases, bearing upon letters patent 
 for designs, decided in the U, S. Courts, to January 
 1, 1874 137 
 
 PAET IV. 
 
 Digest of all the reported cases, bearing upon letters patent 
 for designs, decided in the U. S. Patent Ofiice, to Jan- 
 uary 1, 1874 149 
 
Tl CONTENTS. 
 
 PAET V. 
 
 Comments on the law relating to letters patent for designs. . . 173 
 
 History and analysis of the statutes, relating to letters. 
 
 patent for designs 173 
 
 Patentable subject-matter 183 
 
 Materials and mode of construction 189 
 
 Trade-marks 189 
 
 Qualities of patentable design 191 
 
 Double use 194 
 
 The test of genius .... 194 
 
 The claim 196 
 
 Broad claims 198 
 
 Identity and infringement 200 
 
 Tributary or improved designs 202 
 
 Prior use 204 
 
 Extension 207 
 
TABLE OF CASES. 
 
 U. S. COUETS. 
 
 PAGB 
 
 Ball et al., Root v. .... 1 
 
 Booth V. Garelly e< a/. . . . H 
 
 Bousfield, Clark v. .... 20 
 
 Clark V. Bousfield. .... 20 
 
 CoUender v. Griffith. .... 51 
 
 Crane, Wooster v. . . . . 16 
 
 Garelly et al., Booth v. . . .11 
 
 Gorham Mfg. Co. v. White (Circuit Court). . 30 
 
 Gorham Mfg. Co. v. White (Supreme Court). . 39 
 
 Griffith, CoUender v. ... 51 
 
 Higgins et al., Sparkman et al. v. . . 6 
 
 Root V. Ball etal.. . . . i 
 
 Sparkman et al v. Higgins et al. . , . 6 
 
 White, Gorham Mfg. Co. v. (Circuit Court). SO 
 
 White, Gorham Mfg. Co. v. (Supreme Court). . 39 
 
 Wooster v. Crane. . . . 16 
 
 U. S. PATENT OFFICE. 
 
 Bartholomew, W. N. . . . .65 
 
 Bartholomew, W. N. . . . 103 
 
 Brower, B. ..... 131 
 
 Bridge, Stuart & ... 77 
 
 Crane, J. ..... 59 
 
 CoUender, W. H, . . . . 116 
 
VIU TABLE OF CASES. 
 
 ' ' PAGE 
 
 Collender v. Griffith 119 
 
 CoUender v. Griffith. ... 123 
 
 Diffenderfer, J. D. . . . .112 
 
 Doolittle, T. B 114 
 
 Fenno,E. R 91 
 
 Fairchild, L. W 126 
 
 Griffith, Collender v. . . . .119 
 
 Griffith, Collender V. ... 123 
 
 King, Wm. ..... 85 
 
 Kohler, A 128 
 
 Mayo, I.e. 75 
 
 Oglesby, T. B. .... 121 
 
 Parkinson, P. C. . . . .99 
 
 Solomon, B. L. Ex'r. ... 62 
 
 Stuart & Bridge. . . . .77 
 
 Sheppard, I. A. . . . . 79 
 
 Sellers, G.H .81 
 
 Sperry, E. W. .... 88 
 
 Weinberg, P. ..... 97 
 
 Whyte, W. M 107 
 
PAET I. 
 
 A COLLECTION OF ALL THE REPORTED CASES 
 
 BBAEING XJPON LETTERS PATENT FOR DESIGNS, 
 
 DECIDED IN THE UNITED STATES COURTS, 
 
 TO JAmrARY 1, ISIi. 
 
CASES. 
 
 . DAVID EOOT V. BALL & DAVIS. 
 
 [4 McLean, 177. July Term, 1846.] 
 
 In an action on a design patent, a plea that the invention was in use or 
 on sale before the application for the patent, is demurrable, unless the 
 plea aver an abandonment, or that such use or sale was for more than 
 two years before the application ; for — under section 7 of the act of 
 March 3, 1869 — such use or sale must have preceded the application 
 more than two years, in order to invalidate the patent. 
 
 "The same (design) patent may include a patent for a combination, and 
 an invention of some of the parts of which the combination consists." 
 
 Where a law is in force inflicting a penalty for selling patented articles 
 unstamped with the date of the patent, the selling of such articles un- 
 stamped, which were made before the date of the patent, has no 
 bearing on the plaintiff's right to recover. 
 
 It is not necessary, in order to constitute infringement, " that the thing 
 patented should be adopted in every particular ; but if, as in the 
 pesent case, the design and figures were substantially adopted by the 
 defendants, they have infringed the plaintiff's right." 
 
 " It is an infringement to adopt the design so as to produce substantially 
 the same appearance." 
 
 Fox, for the plaintiff. 
 
 Hart, for tJie defendants. 
 
 OpmiON OF THE CoTJET. This is an action for an infringe- 
 ment of a patent. The plaintiff declares against the defend- 
 ants for violating a patent right granted for a design of orna- 
 mental parts of a stove, dated 9th of September, 1845, with 
 the ordinary breaches. 
 
 The defendants pleaded : 
 
 1. The general issue. 
 1 
 
2 CASES DECIDED BY U. S. COURTS. 
 
 2. Because, before the date of the patent, on the 6th of 
 January, 1844, stoves constructed upon the plan of the stove 
 patented by plaintiff, with the same general design and com- 
 bination of the ornamental parts, were publicly made and sold 
 by the defendants at the district, etc. 
 
 3. Because, before the date of the application for the said 
 letters patent, on the 1st November, 1844, and thence on till 
 the date of said application, stoves constructed on the plan ,of 
 the stoves patented by the plaintiff, with the same general de- 
 sign and combination of the ornamental parts, were publicly 
 for sale by the plaintiff himself at the district, etc. 
 
 4. Because, before the date of issuing the patent, on the 
 1st of January, 1846, and thence on to the date of the same, 
 stoves constructed upon the plan of the stove patented by the 
 plaintiff, with the same general plan and combination of the 
 ornamental parts, were publicly for sale by the plaintiff him- 
 self at Cincinnati, etc. 
 
 5. Because, at the date of application for said letters, on 
 N^ovember 1st, 1844, and thence till the date of said applica- 
 tion, stoves constructed upon the plan of the stove patented 
 by the plaintiff, with the same general design and combina- 
 tion of the ornamental parts, were in public use, and for sale 
 in the city, etc., by the consent and allowance of the plaintiff 
 himself. 
 
 6. Because, before the date of issuing said letters patent 
 of the plaintiff, on the 1st of January, 1845, and thence con- 
 tinually till the date of the patent, stoves constructed upon 
 the same plan with the stove patented by the plaintiff, with 
 the same general design and combination of the ornamental 
 parts, were in public use and for sale at the city, etc., by con- 
 sent and allowance of the plaintiff himself. 
 
 . To the 2d, 4th, and 6th pleas, the plaintiff demurred, and 
 joined issue on the 3d and 5th. 
 
 The pleas demurred to allege, that before the issuing of 
 the patent, stoves of a similar design and combination were in 
 use and for sale. And this, it is contended, is no answer to 
 the plaintiff's action. By the 1th. section of the act of 3d of 
 March, 1839, it is declared that no patent shall be held invalid 
 
ROOT «. BALL <k DAVIS. 3 
 
 "by reason of any sncli purchase, sale, or use prior to the appli- 
 cation for a patent, except on proof of abandonment of such 
 invention to the public, or that such purchase, sale, or prior 
 use has been for more than two years prior to such applica- 
 tion for a patent. 
 
 None of the pleas state that the use spoken of was more 
 than two years prior to the application for the patent, and 
 this is indispensable to render the patent invalid. Indepen- 
 dently of this statute, the plea would have been bad, as the 
 application for a patent must protect the right of the inventor, 
 and the delay which may occur, in the patent-office, in 
 making out the patent, cannot operate to the injury of the 
 applicant. On both grounds, therefore, it is clear that the 
 pleas demurred to constitute no bar to the plaintifFs action, 
 as they do not show that the patent is invalid, by abandon- 
 ment or otherwise. 
 
 When an abandonment is relied on, it should be stated in 
 the plea, and the facts on which the pleader relies, as show- 
 ing an abandonment. The present is different from the for- 
 mer law (Shaw v. Cooper, 7 Pet. E. 292). The jury were 
 sworn to try the issues joined, and witnesses were examined. 
 
 George H. Knight, in September, 1844, was employed by 
 plaintiff to make out the specifications, which are stated in 
 the patent. 
 
 Elias J. Peck is a pattern-maker, and he says that Root's 
 stove was sold in the fall of 1844. And from other witnesses 
 it appeared that Root's stove was put up early in the year 
 1845. Several designs were shown to ornament cooking 
 stoves similar to the plaintiff's, but the figures differ. 
 
 It is admitted that the application and specifications on 
 which the plaintiff's patent issued, were filed the 15th of De- 
 <;ember, 1844. 
 
 It is objected to the plaintiff's patent that two distinct 
 things cannot be united in the same patent. This is true 
 when the inventions relate to two distinct machines; and 
 the reason assigned is, that it would deprive the officers of 
 the government of their fees, and in other respects would be 
 inconvenient. But the same patent may include a patent for 
 
4 CASES DECIDED BY U. S. COURTS. 
 
 a combination, and an invention of some of the parts of 
 which the combination consists. A patent for a combination 
 is not infringed by the use of any part less than the whole of 
 the combination (Moody v. Fiske, 2 Mason, 112). 
 
 It was objected by the defendant, that, as a penalty is im- 
 posed on a patentee for selling an article unstamped, and 
 as stoves were sold by the plaintiff made before the patent,, 
 and which were not stamped, the plaintiff could not recover. 
 But the court overruled the motion, saying that the matter 
 stated could have no influence in this case. 
 
 The court instructed the jury that, as there was no notice 
 or plea, which authorized the defendant to show a want of 
 novelty in the invention claimed by the plaintiff, they would 
 disregard the evidence which had been given on that head. 
 There is no notice appended to the plea of the general issue 
 to that effect, nor do the special pleas make a want of novelty 
 a ground of defence. They would seem to rely on the effect 
 of an abandonment. Or at least, that the right of the 
 plaintiff did not originate with the discovery, or the applica- 
 tion for a patent, but with the emanation of his patent. And 
 the jury were instructed, if they should find that the defend- 
 ants had infringed the plaintiff's patent by using, substan- 
 tially the same device, as ornamental on the same parts of 
 the stove, they would of course find the defendant guilty, and 
 assess such damages, as, in their judgment, the plaintiff was 
 entitled to. To infringe a patent right, it is not necessary 
 that the thing patented should be adopted in every partic- 
 ular ; but if, as in the present case, the design and figures 
 were substantially adopted by the defendants, they have in- 
 fringed the plaintiff's right. If they adopt the same prin- 
 ciple the defendants are guilty. The principle of a machine 
 is that combination of mechanical powers which produces a 
 certain result ; and, in a case like the present, where orna- 
 ments are used for a stove, it is an infringement to adopt the 
 design so as to produce, substantially, the same appearance. 
 
 The jury found for the plaintiff, and assessed their dam- 
 ages at twenty-five dollars. Judgment. 
 
HOOT'S DRAWING. 
 
ROOT a. BALL <fe DAVIS. 
 
 OoPT of the Specifioation of the Letters Patent in Issue in 
 Boot V. Ball et al. 
 
 David Root, Cincinnati, Ohio.— Letters Patent, No. 36, dated 8tli 
 September, 1845. — Design pok Stoves. 
 
 To all Whom it may Concern : 
 
 Be it known that I, David Root, of Cincinnati, in tlie county of Hamil- 
 ton and State of Ohio, have invented or produced a new design of doors 
 and feet to stoves, as respects the omamenfal work ; together with the 
 general design and combination of the several ornamental parts of the 
 stove, and I do hereby declare that the accompanying drawings repre- 
 sent the same, viz. : 
 
 A, panneled doors with a gothic-pointed raffle leaf in panel ; center of 
 panel enriched with a vine leaf springing from a cluster of tied raffle 
 leaves. 
 
 B, the front, containing a sunk transverse panel over the doors (con- 
 taining the name D. Root), with semi-circular terminations, with the 
 same vine leaf springing from clusters of tied raffled leaves on each side 
 of the panel. 
 
 C, squares diagonally reeded in the corners and around the panel on 
 the back of the stove. 
 
 D, the moulding round the doors, consisting of a flat ogee and fillet. 
 
 E, carving on feet and latches, consisting of a leaf in the center and 
 top of the leg; also, a half leaf on each side of the center of the leg, and 
 fluting on each side and toe-shaped reeds at the bottom, and one of the 
 latches having a rosette on the falling end, and triangular grooves across 
 the center ; the other latch having a triangular groove around the edge 
 and triangular fillet on the center. These latches are marked 1 and 3. 
 
 What I claim as original, or as my own invention, is the " General 
 Design and Combination of the several Ornamental parts of the Stove ; 
 also, the Design of the Doors and Feet to the Stoves," but do not claim 
 to be the inventor of the different parts of the stove, except as above set 
 forth. 
 
 DAVID ROOT. 
 Witnesses : 
 
 E. SiNGEB, 
 
 Jas. S. Singer. 
 
CASES DECIDED BY U. S. COURTS.. 
 
 JAMES D. SPARKMAN AND MELVILLE KELSEY v^ 
 HIGGmS & CO. AND 0. & E. HAEYET. 
 
 [1 Blatch. 305. October Term, 1846.] 
 
 A motion to dissolye a provisional injunction will not be granted unless 
 the affidavits offered in support of the motion overcome the equity of 
 the bill and the eyidence supporting it. 
 
 " The study of the courts has recently been, and especially since the 
 patent acts of 1836 and 1839, to carry out the protection of the law to 
 inventors, so as to secure to them the fall benefit of their inventions."^ 
 
 ' ' An inventor is bound to notify the public of his claim, by a caveat, or 
 application filed at the Patent Office, designating his discovery, and 
 what he means to secure to himself." 
 
 " If the claim thus put forward, although originally informal, be fol- 
 lowed up with reasonable diligence, and if, eventually, the patent is 
 granted, it prevents any right being acquired by strangers interfering 
 in the rnean time." 
 
 On motion to dissolve provisional injunction, " it is not for the court 
 * to examine critically the correctness or even sufficiency of the ap- 
 plication, * made, to all appearance, in good faith, and * an 
 attempt to make known and secure the claim." 
 
 ' ' To constitute an inventor of a design, it is not necessary he should have 
 the manual skill and dexterity to make the drafts. If the ideas are 
 furnished by him for producing the result aimed at, he is entitled to 
 avail himself of the mechanical skill of others, to carry out practically 
 his contrivance." 
 
 An inventor may stipulate for the sale of articles embodying his inven- 
 tion before his application for patent, without affecting his right to a 
 patent. 
 
 Such sale does not constitute abandonment. 
 
 The failure of the commissioner of patents to inform a questioner that 
 an application for patent is pending, whereby the questioner is led to 
 make and sell goods embodying the invention, does not affect appli- 
 cant's right. 
 
 Showing articles for sale as " patent goods," or as " registered patterns," 
 will indicate that the taking of a patent thereon is intended. 
 
 Before Bbtts, J., South. Dist. N. Y. 
 
 This M'as a motion before Judge Betts, sitting in the Cir- 
 cuit Court, to dissolve an injunction. The plaintiffs were the- 
 
SPARKMAN V. HIGGINS & CO. 7 
 
 patentees, under the act of August 29th, 1842 (5 U. S. Stat, 
 at Large, 543), of a patent, issued July 24th, 1846, for a 
 design for floor oil-cloth, called The Gothic Pavement pattern, 
 The bill alleged an infringement by the defendants Higgins 
 & Co., by selling, and by the defendants, the Harveys, by 
 making oil-cloths of the patented pattern. An injunction was 
 granted on the bill, and this motion to dissolve it was made 
 on affidavits. 
 
 The defendants showed, that in January, 1846, one Smith, 
 of Ealtimore, saw a sample of the pattern at the plaintiffs' 
 store in New York, and was informed that it was on sale, but 
 not ready for delivery ; that he ordered a quantity, which was 
 sent to him on the 16th of March, and was immediately sold 
 at Ealtimore ; that Higgins & Co. procured from Baltimore 
 enough to show the pattern, and the Harveys, on seeing it, 
 immediately prepared blocks for printing it, which were ready 
 about the 23d of May, when they proceeded to print. They 
 also showed that Rice & Sampson, of Hallowell, Maine, saw 
 the pattern at Baltimore, in May, went to the Patent Office at 
 "Washington, and were then informed that it was not patented, 
 procured the pattern, took it to their works in Maine, made 
 the blocks for printing it, and proceeded to print from them, 
 prior to the date of the patent. The defendants also set up, 
 that the design was the invention of one Berry, a workman 
 in the plaintiff's employ, and made oath that when they got 
 the pattern they did not know it was patented or that the in.. , 
 vention was claimed by the plaintiffs. 
 
 The case on the part of the plaintiffs was this: Kelsey 
 was a practical manufacturer and designer of patterns. Spark- 
 man was familiar with the styles of the trade. They would 
 discuss together the subject of patterns, and inform Berry of 
 their wishes, and criticise and suggest, while the patterns were 
 being designed. Berry had been instructed by Kelsey in the 
 art of getting up patterns. 
 
 In the summer of 1845, Kelsey proposed to Berry to get 
 up a pattern of the kind afterwards patented. Berry did so, 
 but the plaintiffs, on seeing it, disapproved of it, and suggested 
 alterations and improvements. 
 
8 CASES DECIDED BY U. S. COURTS. 
 
 These were adopted by Berry in a new pattern, which was 
 substituted for the first one, and was the one patented. In 
 January, 1846, a sample was printed and sent to the plaintiffs' 
 store to be exhibited for the sale of goods by orders. Higgins 
 & Co. saw it there, and were told by Kelsey that it was some 
 of their patent goods. 
 
 Soon afterwards Smith saw it, and was told by Kelsey it 
 was some of their registered patterns, a term to denote goods 
 of designs patented or intended to be. Smith ordered a quan- 
 tity, to be delivered as soon as possible. On the 20th of 
 February the plaintiffs' application for a patent for the design 
 was received at the Patent Office. But the papers, being in- 
 formal, were amended and sworn to anew, and the application 
 was renewed on the 23d of March. On the 22d of June the 
 papers were again returned as informal, and were then cor- 
 rected and filed again on the lith of July. The patent was 
 then issued. 
 
 Seth P. Staples, for the defendants. 
 
 Daniel Lord, for the plaintiffs. 
 
 Betts, J. The plaintiffs have an injunction granted on 
 their bill of complaint. The defendants move to discharge it, 
 on afiidavits, and unless their proofs overcome the equity of 
 the bill, and the evidence supporting it, the motion must be 
 denied. They may make out a different case at the final 
 hearing ; but this motion must depend on what is now pre- 
 sented to the court. 
 
 The study of the courts has recently been, and especial- 
 ly since the patent acts of 1836 and 1839, to carry out the 
 protection of the law to inventors, so as to secure to them the 
 full benefit of their inventions. An inventor is bound to 
 notify the public of his claim, by a caveat or application filed 
 at the Patent OfBce, designating his discovery, and what he 
 means to secure to himself This is a matter often of nicety, 
 and men of great experience encounter difficulties in preparing 
 their papers. Correspondence ensues between the officers at 
 Washington and the patentee, which consumes time. But if 
 
SPARKMAN V. HIGGINS & CO. 9 
 
 the claim thus put forward, although originally informal, be 
 followed up with reasonable diligence, and if, eventually, the 
 patent is granted, it prevents any right being acquired by 
 strangers interfering in the mean time. Here the first appli- 
 cation, the claim to the invention, was made on the 13th day 
 of February. It was again made on the 23d of March, and 
 the papers were retained by the Patent Office until the 22d 
 of June. They were then sent to New York, and returned 
 with other and correct papers on the 14th of July, and the 
 patent in suit was granted on the 24:th of July. It is not for 
 the court now to examine critically the correctness or even 
 sufficiency of the application ; as it was made to all appear- 
 ance in good faith, and was an attempt to make known and 
 secure the claim. 
 
 It is next contended that Berry was the inventor, and not 
 the plaintiffs, which position, if established, would be a good 
 ground to dissolve the injunction. The defendants lay be- 
 fore the court the declarations of Berry, in connection with 
 his working, without any draft, design or model before him, 
 which the defendants insist proves him to be the inventor. 
 But, on the other hand, Mr. Kelsey details veiy minutely the 
 suggestions he made, his superintendence, his suggesting 
 alterations in a design got up, his disapproving that, and the 
 adoption of his views in the design now patented. And Mr. 
 Berry gives his own account of the matter, and explains the 
 declarations attributed to him, as referring to his working 
 without a copy before him, and to the design being an original 
 and not a copy. He does not intimate that he did not receive 
 suggestions, alterations and directions from Mr. Kelsey, which 
 were carried out in this design. To constitute an inventor, 
 it is not necessary that he should have the manual skill and 
 dexterity to make the drafts. If the ideas are furnished by 
 him, for producing the result aimed at, he is entitled to avail 
 himself of the mechanical skill of others to carry out prac- 
 tically his contrivance. Here the devising of the pattern, in 
 this sense, appears to have been done by the plaintiffs. 
 
 Again. It is contended that the plaintiffs have abandoned 
 their claim, or so dealt with it as to give it to the public. 
 
10 CASES DECIDED BY U. S. COURTS. 
 
 This, if made out, would also entitle the defendants to suc- 
 ceed. They first rely on the sale to Smith, who gave an order 
 for goods on seeing the pattern in January, which the plaintiffs 
 agreed to execute. But an inventor may do this. He may 
 stipulate for a sale of his invention before it is completed, 
 without vitiating his claim ; and these goods were not deliv- 
 ered until after the application of the 13th of February was 
 filed in the Patent OflBce. 
 
 It is urged also, that Eice and Sampson purchased goods 
 of the pattern in question at Baltimore, in April, and applied 
 at Washington to know if it was patented, and were informed 
 that it was not. That was true. But they do not say that 
 they inquired if a patent had been applied for, and whether 
 an application was pending. There was then an application 
 there, with a specimen of the drawing of the design. If the 
 commissioner or the officers had even overlooked it, that 
 would not have defeated the plaintiffs' right. They had, in 
 good faith, made their claim, and were at the time following 
 it up, and eventually matured it. The sale did not defeat 
 the right to the design. 
 
 It also appears that when the goods were shown in Jan- 
 uary, they were shown as the patent goods, or the registered 
 patterns of the plaintiffs, l^ow, although registered patents 
 or patterns is not a term of law, yet it may well have in- 
 dicated a pattern as claimed to be of their design, and one for 
 which they were preparing to take out a patent. 
 
 The defendants have not made out a ease to dissolve the 
 injunction, and the motion must be denied, with costs. 
 
BOOTH V. GAEELLY. 11 
 
 DON ALONZO BOOTH v. JULIUS GEOSS GAEELLY 
 AND OTHEES. IN EQUITY. 
 
 [1 Blatchford, 347. October Term, 1847.] 
 Nelson, J., N. Y. 
 
 A design patent was granted under the act of August 39, 1843, for '' a 
 new and ornamental design for flgured-silk buttons." The specifica- 
 tion describes the configuration of the mold or block forming the 
 foundation of the button, and the mode of securing the thread with 
 which the mold is wound, but does not describe the process of 
 winding the thread. The claim is for " the radially formed ornaments 
 on the face of the mold of the button, combined with the mode of 
 winding the covering of the same, substantially as set forth." 
 
 Held, that the process of winding is not claimed, but that " the mode 
 of winding claimed to be new is the arrangement of the different 
 colored threads, in the process, so as to produce what is called the 
 radially formed ornaments on the face of the button." 
 
 Infermtially, the claim In a design patent may cover a genus or class of 
 ornaments. 
 
 Abandonment is a question of fact. 
 
 The 7th section of the act of March 3, 1839, allowing two years' public 
 use and sale of an invention prior to application for patent, held ap- 
 plicable to design patents granted under the act of August 39, 1843. 
 
 Qiuery, whether the sale of an article bearing a design is a sale of the 
 design. 
 
 Provisional injunction refused where the novelty of the patented design 
 was attacked, and it was admitted that the patentee had, before his 
 application for the patent, sold large quantities of articles bearing the 
 patented design marked as imported from abroad. 
 
 This was a motion for a provisional injunction to restrain 
 the defendants from infringing the plaintiff's patent. The^ 
 case is sufficiently stated in the opinion of the court. 
 
 Samuel Sherwood, for the plaintiff. 
 
 Abijah Mamm,, Jr , for the defendants. 
 
12 CASES DECIDED BY U. S. COURTS. 
 
 ISTelson, J. The letters patent to the plaintiff, were issued 
 -July 24:th, 184:7, for " a new and ornamental design for 
 flgured-silk buttons." 
 
 The design is described as consisting of two distinct ele- 
 ments or characters, to be used in combination, in order to 
 insure the beauty of the article : 1st. The configuration of 
 the mold or block, having radial indentations thereon, form- 
 ing the foundation of the button ; 2d. "Winding the said 
 block with silk, in the manner thereafter described. The 
 beauty and effect of the design, it is said, depend upon these 
 two things, which, together, form the design, and without 
 which it cannot be produced. Accompanying the patent are 
 several drawings, representing wooden molds, with different 
 radial figures cut upon the faces of them, and also others 
 wound with silk of different colors, presenting samples of 
 figured buttons of various hues. The mode of securing the 
 thread with which the mold is wound, to prevent the same 
 from slipping, is particularly described, and suggestions are 
 made that the mold can be varied to any figure desired, and 
 also that the silk covering may be varied in its combination 
 of colors. The process of winding the silk upon the 
 mold is not described. Then follows the claim, -which is, 
 " the radially formed ornaments on the face of the mold of 
 the button, combined with the mode of winding the covering 
 of the same, substantially as set forth." The patent is 
 granted nnder the act of August 29th, 1842 (5 U. S. Stat, at 
 Large, 543, § 3), which authorizes the granting of the same 
 foi' any new and original design for a manufacture, or any 
 new and useful pattern, or any new and original shape or con- 
 figuration of any article of manufacture, not before known or 
 used by others. The invention in this case falls within the 
 first clause of the section, if within any, as a " new and orig- 
 inal design for a manufacture " — a design for the manufacture 
 of an ornamental button. It was supposed on the argument, 
 by the counsel for the defendants, that the process of winding 
 the mold with the silk thread constituted a part of the inven- 
 tion ; and that if it could be shown that this was not new, 
 but had been known and in public use before, the patent was 
 
BOOTH V. GARELLY. 13 
 
 void. This process is not described in the specification, and 
 we are inclined to think it was not intended to be claimed. 
 The mode of winding claimed to be new, is the arrangement 
 of the different colored threads in the process, so as to pro- 
 duce what is called the radially formed ornaments on the face 
 of the button. For this purpose and to this extent, the de- 
 scription, in connection with the drawings, appears to be 
 sufficiently fall and explicit, and a person of ordinary still in 
 the art would, probably, find no difficulty from the description 
 as given, in working the silk ornaments of varied color and 
 shade, upon the face of the mold. 
 
 It is admitted that the patentee manufactured these but- 
 tons and put them into the market on sale, some two or three 
 months before he made application for his patent, and it is 
 hence insisted that the " design " has been abandoned to the 
 use of the public. It is claimed, however, that in every in- 
 stance of sale, he gave notice that he was preparing to apply 
 for a patent, and intended to secure his exclusive right to the 
 invention. The evidence on the point of abandonment raises 
 a question of fact, which must be settled upon the trial of the 
 suit at law, which is now pending between the parties. 
 
 The seventh section of the act of March 3d, 18-39 (5 U. S. 
 Stat, at Large, 354), provides that every purchaser of a newly 
 invented machine, manufacture, or composition of matter, 
 from the inventor, prior to his application for a patent, shall 
 be held to possess the right to use the article, and to vend it 
 to others to be used, but that the patent shall not be held to 
 be invalid by reason of such prior purchase, sale or use, except 
 on proof of abandonment of the invention to the public, or 
 that such purchase, sale or prior use, has been for more than 
 two years prior to the application. As the sales in this case 
 were made but a short time before the application, the ques- 
 tion will be upon the abandonment — a question of intention 
 upon the facts proved. 
 
 There may be some doubt whether the sale of the manu- 
 factured button by the inventor, amounts to a sale of the 
 thing invented, within the meaning of this seventh section. 
 
 If the button be regarded simply as a product of the in- 
 
li CASES DECIDED BY U. S. COURTS. 
 
 TentioD, it is clear that a sale of it would not be a sale of the 
 invention ; for, a sale within the provision must be a sale of 
 the invention or patented article. The patent is not for the 
 manufacture of a new and ornamental button, but, for a new 
 and ornamental design in the manufacture of the article. 
 The " design," however, is worked upon the face of the but- 
 ton, and may therefore, perhaps, be said to be sold with it. 
 In this view, a sale of the button would be a sale of the 
 " design," the thing patented, and not simply of the product 
 of the invention. The novelty of the invention is denied by 
 the defendants, and it is admitted that large quantities of the 
 article, in packages marked as imported from Paris, were 
 sold by the patentee before his application for the patent, 
 thereby affording an implication against him as the original 
 inventor, and in favor of the allegation of the defendants. 
 
 Upon the whole, therefore, we shall withhold an injunc- 
 tion until the plaintiff's right shall have been established in 
 the suit at law. 
 

 
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BOOTH ,1. GA.RELLY. 15 
 
 <DoPY of the SpeGification of the Letters Patent in Issue in 
 Booth V. Oarelly et al. 
 
 Don a. Booth, New York, N. Y. — Letters Patent for Design for 
 Figured-Silk Buttons, No. 139.— Dated 24th July, 1847. 
 
 To all to Whom tJiese Presents shall Come : 
 
 Be it known that I, Don A. Booth, of the city, county and State of 
 New York, have invented a new and ornamental design for figured-silk 
 buttons, and that the following is a fuH, clear and exact description 
 thereof, reference being had to the accompanying drawings making part 
 -of this specification. 
 
 This design for an ornamental button is composed of two distinct 
 elements or characters which are to be used in combination to insure the 
 beauty of the article. These consist, first, in the configuration of the 
 mold or block, having radial indentations thereon, which forms the basis 
 of the button; and, second, in winding said block with silk in the man- 
 ner hereafter described ; the beauty and effect of this design being due 
 to these two features which, together, form the design, and without 
 which it cannot be produced. 
 
 In the accompanying drawings, figures 1, 3 and 3 represent wooden 
 molds cut with different figures, all of which radiate from the center, so 
 that in winding on the silk the threads shall cross each other in the cen- 
 ter, represented in figures 4, 5 and 6. 
 
 After the threads of silk have been wound on the mold, where they 
 cross each other in the center, they are secured by a thread which passes 
 through a hole in the center of the mold, as shown in figures 1, 2 and 3, 
 to prevent the figuring threads from slipping from their appropriate 
 places. 
 
 In addition to this mode of figuring, the silk or radially wound cover- 
 ing can be varied in its colors to any extent of shade desired without 
 affecting the general character of the design. It will be obvious, from 
 the foregoing, that the figures can be changed at pleasure by giving the 
 desired form to the face of the mold, so long as these figures are formed 
 in the face of the mold by depressions and elevations which radiate from 
 a point, whether on the center of the mold or eccentric thereto. 
 
 What I claim in the above-described design as my invention, and de- 
 sire to secure by letters patent, is the radially formed ornaments on the 
 face of the molds or blocks of which the button is formed, combined 
 with the mode of winding the covering on the same, substantially as set 
 ibrth, whether the covering be of one or more colors. 
 
 D. A. BOOTH, 
 
 Witnesses ; 
 
 John V. Gkipfin, 
 William Trotter. 
 
16 CASES DECIDED BY U. S. COURTS. 
 
 EMMA C. WOOSTEE, v. JASON CEANE et al. EST 
 
 EQUITY. 
 
 [2 Fisher's Patent Cases, 583.] 
 Benedict, J., South. Dist. N. Y., Oct. 7, 1865. 
 
 "The act (of March 2, 1861) although it does not require utility in order 
 to secure the benefit of its provisions, does require that the shape pro- 
 duced shall be the result of industry, effort, genius or (and) expense, 
 and must * * * be held to require that the shape or configuration 
 sought to be secured, shall at least be new and original as applied ta 
 articles of manufactui-e." 
 
 Where the patented shape was " a common one in many articles of man- 
 ufacture," " an arbitrary, chance selection of one of many well known 
 shapes all equally well adapted to the purpose," from the selection of 
 which no advantage was derived except the incidental use as a trade- 
 mark — the patent held invalid. 
 
 (Before Benedict, J., Southern District of New York, October, 1865.) 
 
 This was a bill in equity, filed to restrain defendants from 
 infringing upon letters patent for a "design for a reel," 
 granted under the act of March 2, 1861, to complainant, and 
 dated October 20, 1863. 
 
 The facts sufficiently appear in the opinion of the court. 
 
 Thomas P- How, for complainant. 
 S. F. Freeman, for defendants. 
 
 Benedict, J. This is a bill in equity, filed to recover 
 damages for an alleged infringement of a patent issued Oc- 
 tober 20, 1863, for a design for a reel. 
 
 The article in question is a reel for containing ruffles, 
 ladies' dress trimmings, and other goods, and consists of two 
 parallel disks of pasteboard, connected by four bits of wood, 
 on which the ruffle is wound, between the pasteboard sides. 
 
"WOOSTER V. CRANE. 17 
 
 The pasteboard is cut in the shape of a rhombus, with the 
 angles rounded ; and what the patentee claims is " the design 
 and configuration of the reel." 
 
 The statute relied on, as giving to the complainant the 
 right sought to be enforced, is the act of March 2, 1861. 
 
 Section 11 of this act is as follows : 
 
 " Section 11. And be it further enacted, That any citizen 
 or citizens, or alien or aliens having resided one year in the 
 United States, and taken the oath of his or their intention to 
 become a citizen or citizens, who, by his, her, or their own in- 
 dustry, genius, efforts, and expense, may have invented, or 
 produced any new and original design for a manufacture, 
 whether of metal or other material, or any new or useful pat- 
 tern, or print, or picture, to be either worked into or worked 
 on or printed, or painted or cast, or otherwise fixed on any 
 article of manufacture, or any new or original shape or con- 
 figuration of any article of manufacture not known or used 
 by others before his, her, or their invention or production 
 thereof, and prior to the time of his, her or their application 
 for a patent therefor, and who shall desise to obtain an exclu- 
 sive property or right therein, to make, use, and sell and 
 Tend the same, or copies of the same to others, by them to be 
 made, used and sold, may make application, in wiiting, to the 
 commissioner of patents, expressing such desire, and the com- 
 missioner, on due proceedings had, may grant a patent there- 
 for as in the case now of an application for a patent." 
 
 I am not aware that any judicial construction has been 
 given to the portion of this act considered applicable to this 
 case. No authorities were cited on either side showing any 
 adjudication upon the question involved. There seems to 
 me, however, to be little doubt as to what should be the con- 
 struction to be put upon it, when sought to be applied to a 
 case like this. 
 
 In this case, the reel itself, as an article of manufacture, is 
 
 conceded to be old and not the subject of a patent. The shape 
 
 .applied to it by the complainant is also an old, well-known 
 
 jnathematical figure. Now, although it does not appear that 
 
 any person ever before applied this particular shape to this 
 
 2 
 
18 CASES DECIDED BY U. S. COURTS. 
 
 particular article, I cannot think that the act quoted above' 
 was intended to secure to the complainant an exclusive right 
 to use this well-known figure in the manufacture of reels. 
 The act, although it does not require utility in order to secure 
 the benefit of its provisions, does require that the shape pro- 
 duced shall be the result of industry, effort, genius, or ex- 
 pense, and must also, I think, be held to require that the 
 shape or configuration sought to be secured, shall at least be 
 new and original as applied to articles of manufacture. But- 
 here the shape is a common one in many articles of manufac- 
 ture, and its application to a reel cannot fairly be said to be 
 the result of industry, genius, effort, and expense. No ad- 
 vantage whatever is pretended to be derived from the adop- 
 tion of the form selected by the complainant, except the 
 incidental one of using it as a trade-mark. Its selection can 
 hardly be said to be the result of effort even ; it was simply 
 an arbitrary, chance selection of one of many well-known 
 shapes, all equally well adapted to the purpose. To hold' 
 that such an application of a common form can be secured 
 by letters patent, would be giving the act of 1861 a con- 
 struction broader than I am willing to give it. The decree 
 must, therefore, be for the defendant. 
 
^WOOSTERS DRAWING 
 
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TV'OOSTER V. CRANE. 19 
 
 Copt of the Specification of the Letters Patent in Issue in 
 Wooster v. Crane et al. 
 
 Emma C. Woostek, of New York. — Letters Patent, No. 1834, dated 
 October 20, 1863. — Design for a Reel. 
 
 To all Whom it may Concern : 
 
 Be it known that I, Emma C. Wooster, of the city, county and State 
 of New York, haye inyented a new design for a reel for containing 
 ruffles, ladies' dress trimmings and other goods; and I do hereby declare 
 that the following is a full, clear and exact description of the same, ref- 
 erence being had to the accompanying drawings forming part of this 
 specification, in which 
 
 Figure 1 is an end yiew of the reel. 
 
 Figure 2 is a side yiew of the same. 
 
 Figure 3 is a section of the same in a plane parallel with figure 1. 
 
 Similar letters of reference indicate corresponding parts in the several 
 figures. 
 
 The configuration of the reel is that of a rhombus with the angles 
 rounded off— its heads, A A, being composed of disks of that form, and 
 the rods, 55, which connect them, being arranged near the rounded 
 comers. 
 
 What I claim as my inyention, and desire to secure by letters patent 
 is; 
 
 The design and configuration of the reel herein described and repre- 
 sented in the accompanying drawings. 
 
 EMMA C. WOOSTER. 
 Witnesses : 
 
 ThOS. J. DOTJGLASS, 
 
 Geo. W. Reed. 
 
20 CASES DECIDED BY 0. S. COURTS. 
 
 CLARK V. BOUSFIELD. 
 
 [10 Wallace, U. S. Sup. Ct. 133.] 
 
 In a patent for an " Improvement in Machines for Graining Pails," one 
 claim, among others, was made for " arranging the elastic material 
 aforesaid, whether curved or rectangular in form, in a series of distinct 
 staves or designs, substantially, &c.," Held — That this is not a claim 
 for a design. 
 
 On certificate of division between the judges of the Cir- 
 cuit Court for the Northern District of Ohio, the case being 
 this : 
 
 The patent act of July 4th, 1836, " to promote the prog- 
 ress of the useful arts," authorized the patenting of anj 
 " new and useful art, machine, manufacture, or composition 
 of matter," and gave an exclusive right to the patentee for a 
 term of fourteen years, with a privilege of renewal for seven 
 in certain cases, but this act did not allow a patent for mere 
 designs. 
 
 The eleventh section of an act of March 2d, 1861, entitled 
 " An act in addition to an act to promote the progress of the 
 useful arts," extends this privilege of patent. It secures to 
 the inventor or producer of any original design, &c. ; or any 
 new and original impression or ornament, to be placed on 
 any article of manufacture, &c. ; or any new and useful pat- 
 tern, or print, or picture, to be either worked on, or printed, 
 or painted, on any article of manufacture ; or any new and 
 original shape or configuration of any article of manufacture, 
 not known or used before, &c., a patent for the exclusive 
 property therein ; and it gives this right for a term of years, 
 diflferent from the term granted by the act of 1836, to the in- 
 ventor of a machine, &c. 
 
 With both acts in force, E. & A. Cross obtained, Decem- 
 ber BTth, 1864-, a patent for a new and useful improvement 
 in machines for graining pails, and other analogous uses. 
 The nature of it, as declared by them in the schedule to 
 
CLARK V. BOUSFIELD 21 
 
 the letters patent, consisted in constructing an elastic bed, 
 containing the impression or impressions of the device to be 
 grained npon the pail, in separate panels, each panel to be of 
 different design, so that by moving the pail over the same 
 . the various designs would be stamped iipon the pail, thus 
 producing a pail whose staves were painted in imitation of 
 different tinds of wood. The patentees then described the in- 
 strument or machine, which they stated to be a box, into 
 which the elastic material, with the required designs to be 
 grained upon the pail, is placed, and which might, according 
 to their statement, be constructed of wood or iron, or any 
 other suitable material, and so shaped (describing the shape 
 minutely), that when the pail was adjusted properly upon 
 the bed, and rolled upon and over it, the upper or large end 
 of the pail should follow the outer curve of the bed, and the 
 lower or smaller should follow the interior or smaller curve 
 with exactness and precision. 
 
 " The elastic bed," they say, " may present one con- 
 tinuous or uniform design if desired, or it may be arranged 
 in blocks or staves, each of different designs, so that the pail 
 grained thereon or thereby shall present the appearance of 
 being constructed of different kinds or species of wood. 
 
 " The elastic bed may be composed of any suitable impress- 
 ible material, as rubber or leather ; but a compound of glue 
 and molasses, such as is used for printers' rollers, is pre- 
 ferred." 
 
 The patentees then described the contrivances for work- 
 ing the elastic bed in connection with the pail, so as to effect 
 the graining of the latter. By this contrivance the pail, they 
 state, is readily rolled by hand across the bed, leaving upon 
 it the desired design or figure, or the pail may be suspended 
 on handles, and the elastic bed itself moved beneath it, in a 
 suitably arranged grove or track, producing the same result. 
 The patentees then set forth their claims, the first two of 
 which only are material : 
 
 First — " "We claim constructing the bed of the elastic 
 material used in graining machines, in the form herein shown, 
 substantially as and for the purposes specified." 
 
22 CASES DECIDED BY U. S. COURTS. 
 
 Second — " We claim arranging the elastic material afore- 
 said, whether curved or rectangular in form, in a series of 
 distinct staves or designs, substantially as and for the pur- 
 poses herein shown and set forth." 
 
 On a suit below, by Clark and others, assignees of Cross, 
 the patentee, against one Bousfield, for infringement, it was( 
 suggested, on behalf of the defendant, that the second claim 
 was for nothing more or other than a design to be impressed 
 on the bed ; and if this was so, that the claim would be void, 
 as a patent could not properly contain a valid claim for a 
 machine, and contain also a claim for a design ; that the two 
 things were patentable under different acts and for different 
 terms of time. 
 
 The judges of the Circuit Court were accordingly divided 
 upon the question whether the second claim in said letters 
 patent was for anything patentable other than under the al- 
 ready mentioned section eleven of the act of March 2d, 1861. 
 And if not, whether the patent was not void. 
 
 Messrs. J. Canfield and A. G. Riddle, for the plaintiff. 
 
 We admit that if this second claim is, in substance, a claim 
 for a design, instead of a claim for a principle in an apparatus, 
 it should have been patented under the act of 1861 ; but if it 
 is for a principle in an apparatus, then we assert that it does 
 not come under the act of 1861, but under the act of 1836. 
 Now, Judge Grier, in Corning v. Burden (15 Howard, 268), 
 has thus defined the principle patentable as a machine : 
 
 " It is for the discovery or invention of some practicable 
 method or means of producing a beneficial result, or effect, 
 itself. It is when the term process is used to represent the 
 means or method of producing a result, that it is patentable ; 
 and it will include all methods or means which are not effected 
 by the mechanism or mechanical combination. But the term 
 process is often used in a more vague sense, in which it can- 
 not be the subject of a patent ; thus, we say that a board is 
 undergoing the process of being planed, grain of being groimd, 
 iron of being hammered or rolled. Here the term is used 
 subjectively or passively, as applied to the material operated 
 
CLARK V. BOUSFIELD. 23 
 
 on, and not to the method or mode of producing that opera- 
 tion, which is by mechanical means or the use of a machine, 
 as distinguished from a process. In this use of the term it 
 represents the function of a machine, or the effect produced 
 by it on the material, subjected to the action of the machine. 
 
 But it is well settled that a man cannot have a patent for 
 the function or abstract effect of a machine, but only for the 
 machine which produces it." 
 
 This language is both concise and correct ; and tested by 
 it our second claim is for the machine which produces the 
 effect, and not for the effect itself. In other words, it is for 
 the machine which grains a pail in staves, which staves repre- 
 sent different kinds of wood, and not for the impression upon 
 the pail, representing staves of different kinds of wood. 
 
 The means of producing this effect on the pail, is our ma- 
 chine, which comes under the act of 1836 ; the effect, as pro- 
 ■duced, is a design, which comes under the aet of 1861, and 
 for which we claim nothing. 
 
 Mr. George Willey, with a printed brief of Messrs. George 
 "Willey, John E. Carey, and H. S. Sherman, contra. 
 
 The nature and object of the invention, as stated in the 
 specification, contemplated a design and the construction of a 
 bed corresponding with the shape of the design, but as an 
 obvious sequence or incident of the design. Nothing is 
 claimed on the material, or box or bed or its material, nor as 
 to form could anything be claimed in the way of invention, 
 inasmuch as it involves the mere measurement of surface, the 
 simplest of mechanical operations. Then it says, " the elastic 
 bed may present one continuous or uniform design, if desired, 
 or it may be arranged in blocks or staves, each of different 
 designs," meaning block or stave designs. 
 
 Again, it speaks of " different designs arranged in staves," 
 which is but another form of representing stave designs. 
 Again, it speaks of the " pail being rolled across the bed and 
 grained in staves in imitation of various woods or marbles." 
 The specification does not say, series of separate pieces or 
 iblocks, but a " series of distinct staves or designs,^^ and the 
 
24 CASES DECIDED BY U. S. COURTS. 
 
 specification speaks of " different designs arranged in staves^ 
 impressed upon a single united mass, so as to producs the 
 same effect as when constructed in separate blocks," evidently 
 treating staves and designs as synonymous or convertible, the 
 word " staves" meaning stave designs ; so that, from all these 
 considerations, it is obvious that stave designs impressed on a 
 bed, whether curved or rectangular, for the purpose of trans- 
 ferring said stave designs to a pail, or " other analogous 
 uses," or to rectangular objects, is the substantial object or 
 meaning of this second claim. If this be so, then the doubt 
 suggested below is well founded, and the plaintiff has no 
 valid patent. 
 
 Mr. Justice ITelsoit delivered the opinion of the court. 
 
 It will be seen, by reference to the eleventh section of the 
 act of 1861, that if the second claim is patentable under this, 
 section, it must be a claim for an original design or impres- 
 sion, or ornament, or pattern, or picture, and the like, wholly 
 irrespective of the means of producing it. The patent is 
 simply for the design, &c., itself. In order to understand the 
 full meaning of this second claim, it will be useful to settle 
 the meaning of the first, as the two are intimately connected. 
 
 The first, as we ,have seen, is for constructing the bed for 
 the elastic material used in graining machines, in the form 
 shown, and for the purposes specified. The patentees de- 
 scribe it as a box or bed, and which may be constructed of 
 wood or iron, or of any other suitable material. 
 
 This box or bed is made for the purpose of holding the 
 elastic material, whether of rubber or leather, or the com- 
 pound of glue and molasses, which is preferred. Now, the 
 second claim is for arranging the elastic material, when placed 
 in this box or bed, whether curved or rectangular in form, 
 " in a series of distinct staves or designs," for the purpose 
 specified ; that is, for the purpose of graining pails in the 
 variety of colors or figures described. The elastic bed may 
 be arranged, as is stated in the specification, so as to present 
 one continuous or uniform design, or it may be arranged in 
 blocks or staves, each of different designs, so that the vessel 
 
CLARK „. BOCrSFIELD. 25- 
 
 shall present the appearance of different kinds of wood, as 
 rosewood, oak, walnut, and others. It may also be con- 
 structed of separate pieces or blocks, as shown in the drawing-, 
 or the material may be a single united mass, impressed by 
 different designs arranged in staves, so as to produce the same 
 effect as when constructed in separate blocks. The two claims, 
 as we see, are closely connected, and each essential to the 
 complete construction of the instrument or apparatus, which, 
 when put into practical operation by the contrivances pointed 
 out in the specification, can accomplish the desired result, 
 which result is the graining of the exterior body of the pail 
 with a variety of colors and figures. 
 
 The learned counsel for the defendants below insists that 
 this second claim is only an arrangement of designs, and, in 
 a limited sense, he is no doubt right, but in its connection 
 with the first claim, and with the machine for transferring the 
 design to pails, it is more ; it is a part of the machine or in- 
 strument, and an indispensable part ; it is the elastic bed of 
 rubber, or of leather, or compound of glue and molasses, of 
 any arranged figure or design, tliat constitutes an element in 
 the machine, and which, with the curved box and contrivances 
 for working the instrument, produces the desired result. 
 
 The figure or design is but incidental, and, as such, has no 
 other protection than that which the patent secures to the in- 
 ventor of the machine. The right to the use of the machine 
 carries along with it the right to use the designs. 
 
 The arranged figure in the elastic bed is not the one pro- 
 tected by the eleventh section of the act of 1861 ; that is the 
 one which is transferred to the pail or wares, where its beauty 
 is first visible to the eye. "While it remains in the elastic 
 material it exhibits no more beauty than if engraved on stone 
 or metal. 
 
 It may be that the inventors of the machine for impressing 
 figures or designs upon pails or other wares would not be 
 protected from using figures or designs, the right of property 
 in which had been secured to the original inventor under this 
 eleventh section, but they may clearly use any and all not 
 thus protected. The machine in question is invented for re- 
 
26 CASES DECroED BY U. S. COURTS. 
 
 ■ducing to practical use these figures and designs, and will 
 make them profitable to the original inventors or owners of 
 them, if they choose to employ it. 
 
 We are of opinion that the first question should be an- 
 swered in the affirmative, and the second in the negative. 
 
CLAEK V. BOUSFIELD. 27 
 
 OoPT of the Sj>ecifioation of the Letters Patent in Issue in 
 Clark V. jBousfeld. 
 
 ■3. R. & A. J. Cross, of Chicago, Illinois. — Letters Patent, No. 45,590, 
 dated December 17, 1864. — Appaeatds fob Gkaining Pails. 
 
 SPECIFICATION. 
 
 'To all Whom it may Concern : 
 
 Be it known that we, J. R. Cross and A. J. Cross, of Chicago, in the 
 ■county of Cook, and State of Illinois, have invented a new and useful 
 ImproTement in Machines for Graining Pails and other analogous uses ; 
 and, we do hereby declare that the following is a full, clear and exact de- 
 scription thereof, reference being had to the accompanying drawings and 
 "the letters and figures marked thereon, forming part of this specification. 
 
 In the said drawings, which are hereunto attached. 
 
 Figure 1 represents a perspective view of our invention, and 
 
 Figure 2 is a central sectional view of the pail or other vessel to be 
 grained, with the devices thereunto attached. 
 
 The nature of our invention consists in constructing the elastic bed 
 containing the impression or impressions of the device to be grained 
 upon the pail, in separate panels, each panel to be of difi'erent designs, 
 80 that by moving the pail over the same, the various designs will be 
 stamped upon the pail, thus producing a pail whose staves are painted 
 in imitation of different kinds of wood. 
 
 To enable those skilled in the art to fully understand how to con- 
 •struct and use our invention, we will proceed to describe the same with 
 particularity, reference being made to the aforesaid drawings. 
 
 A represents the box or bed into which the elastic material impressed 
 ■with the required designs to be grained upon the pails, is placed or 
 framed, and may be constructed of wood or iron, or any other material 
 suitable for the purpose. 
 
 The elastic bed upon which the desired impression is made, presents 
 a plane surface, whose area is included between the arcs of two concen- 
 tric circles described upon radii whose difierence in length is equal to the 
 height of the pail or other vessel to be grained, the length of the exterior 
 arc being equal to the circumference of the top or larger end of the pail, 
 and the length of the interior arc being equal to the circumference of 
 the bottom or smaller end thereof, and the corresponding ends of the said 
 two arcs being joined by two straight lines. 
 
 The curvatures of said arcs must be adapted to the different sizes of 
 pails to be grained, and also to the different inclinations of their sides 
 from the vertical, so that when the pail is adjusted properly upon said 
 
28 CASES DECIDED BY U. S. COURTS. 
 
 bed, and rolled upon and over it, the upper or larger end shall follow the- 
 outer curve, and the lower or smaller end shall follow the interior or 
 smaller curve, with -exactness and precision. 
 
 The elastic bed may present one continuous or uniform design, if de- 
 sired; or it may be arranged in blocks or staves, each of different 
 designs as shown in figure 1, by the letters, a, I, c, d, «,/, g, so that th& 
 pail or vessel grained thereon or thereby, shall present the appearance of 
 being constructed of different kinds or species of woods, as rosewood,, 
 oak, walnut and others." 
 
 The elastic bed may be constructed of any suitable impressible |ma- 
 terial, as rubber or leather, but I consider the best material for the pur- 
 pose to be a compound of glue and molasses, which is used for printers' 
 rollers. 
 
 The bed may also be constructed of separate pieces or blocks, as 
 shown, or the material may be a single united mass impressed by differ- 
 ent designs arranged in staves, so as to produce the same effect as when 
 constructed in separate blocks. 
 
 The same material may also be employed to imitate marbles, and 
 other ornamental stones. 
 
 It may be used for graining other wares, as for japanning and other 
 similar purposes, and also for graining broom handles. 
 
 It may be observed, however, that when the articles to be grained 
 have upright or parallel sides, the bed may be of rectangular form instead 
 of the form shown. 
 
 C, jD, E and F, represent the handles and other devices for affixing 
 or attaching said handles, C and F, to the pails to facilitate the opera- 
 tion of graining. 
 
 D, D are two circular plates fitting closely into the pail as shown, 
 which are rigidly attached to the handle, G, and when introduced as 
 shown into the pail, hold the same firmly. 
 
 F, F represent a circular plate divided in two parts, to each of which 
 is rigidly attached the handles, F, F, as shown. 
 
 The said handles, F, F, are connected by a hinge at h, and between 
 them is aii'anged a spring, s, to throw said handles apart when not con- 
 fined by the ring, r, upon the ends of the same. 
 
 Having described the construction and nature of our invention, we 
 will now describe the mode of operation and application of the same. 
 
 The ring, r, being removed from the end of the handle, F, F, the op- 
 posite ends thereof approach each other, being forced together by the 
 operation of the spring, s, and hinge, h, and thus the two parts of the 
 plate, E, E, are drawn together diminishing its size so that it can readily 
 introduce within the chine of the bottom of the pail, when by pressing- 
 the ends of F, F, together and replacing the ring, r, the plate, F, F, is. 
 expanded and adjusted within said chine, so as firmly to fasten the- 
 
CLARK V. BOUSFIELD. 29 
 
 handle, F, so the pail. The handle, C, is then readily inserted and ad- 
 justed within the pail, when the operator grasps the handles, 0, F, and 
 adjusts the pail upon the elastic bed as shown, the paint or coloring 
 matter haying been previously applied thereto by means of a roller, or in 
 any other suitable and convenient manner. The pail is then readily ' 
 rolled across the bed, and is, by this simple operation, grained in the 
 most beautiful manner in staves, in imitation of various woods or marbles, 
 as before described, when the handles are detached and applied to 
 another pail and the operation repeated. 
 
 Instead of rolling the pail over the said bed, the pail may be sus- 
 pended upon the handles or their removable equivalents, and the elastic 
 bed itself moved beneath the paU in a suitably arranged groove or truck 
 producing the same result. Or the application may be made in any 
 other convenient and practical manner. 
 
 Having described the nature, construction and operation of our ma- 
 chine for graining pails and other analogous uses, we will now specify 
 what we claim as new therein and desire to secure by letters patent. 
 
 First. We claim constructing the bed of elastic material used in grain- 
 ing machines in the form herein shown, substantially as and for the pur- 
 poses specified. 
 
 Second. We claim arranging the elastic material aforesaid, whether 
 curved or rectangular in form, in a series of distinct staves or designs, 
 substantially as and for the purposes herein shown and set forth. 
 
 Third. We claim the aiTangement of the expansible plate, F, F, and 
 the handle, F, F, provided with the hinge, Jc, and spring, s, as and for 
 the purposes described. 
 
 Fourth. In combination with the last foregoing, we claim the em- 
 ployment of the handle, &, and plates, D, D, as and for the purposes 
 shown and described. 
 
 J. R. CROSS, 
 A. J. CROSS, 
 Witnesses : 
 
 L. L. COBUBN, 
 
 W. E. Makes. 
 
30 CASES DECIDED BY U. S. COURTS. 
 
 THE GORHAM MANUFACTUEING COMPANY v, 
 GEOEGE C. WHITE. IN EQUITY. 
 
 [7 Blatch. 513. South. Dist. N. T. Blatchford, J., Sept. 1870.] 
 
 The letters patent to John Gorham, Gorham Thurber, and Lewis Dexter^ 
 Jr., dated July 16th, 1861, for a '' design for the handles of table spoons 
 and forks,'' are not infringed by articles made in accordance with the 
 letters patent to Le Roy S. White, dated January 15th, 1867, for a. 
 " design for spoon handles, fork handles," &c., or by articles made in 
 accordance with the letters patent to Le Roy S. White, dated March 
 31st, 1868, for a " design for spoon, fork, and other handles." 
 
 The several designs treated by the court in analyzing and comparing 
 them as composed, each — in general terms — of a combination of two 
 elements, to wit : 1st, the outline of the handle ; and 3d, the ornament- 
 ation on the handle. 
 
 The outlines of two of the handles being found to be substantially the 
 same, but the ornamentation thereon being held to be somewhat diflFer-- 
 ent, the two designs were held not to be substantially identical. 
 
 The eye of an ordinary or casual observer is not a proper test as to the 
 substantial identity of designs on different articles. 
 
 " The same principles which govern in determining the question of in- 
 fringement, in respect to a patent for an invention connected with the 
 operation of machinery, must govern in determining the question of 
 infringement in respect to a patent for a design." 
 
 " A design for a configuration of an article of manufacture is embraced 
 within the statute as a patentable design," and " the object * * * 
 may solely be increased utility." 
 
 The only test of the substantial identity of designs on different articles^ 
 " is the observation of a person versed in the business of designs in the 
 particular trade in question — of a person engaged in the manufacture 
 or sale of articles containing such designs — of a person accustomed to 
 compare such designs one with another, and who sees and examines 
 the articles containing them side by side." 
 
 " A patent for a design, like a patent for an improvement in machinery^ 
 must be for the means of producing a certain result or appearance, and 
 not for the result or appearance itself." 
 
 " Even if the same appearitnce is produced by another design, if the means 
 used in such other design to produce the appearance are substantially 
 
GORHAM MANUFACTURING CO. v. WHITE. 31 
 
 different from the means naed in the prior patented design to produce 
 such appearance, the later design is not an infringement of the pat- 
 ented one." 
 
 Elatohfoed, J. This suit is founded on letters patent 
 granted to John Gorham, Gorham Thurber, and Lewis Dexter, 
 Jr., July 16th, 1861, for a design " for the handles of table 
 spoons and forks." The completed spoon or fork consists of 
 a bowl or fork, a stem, and an enlarged end, the stem being 
 interposed between the enlarged end and the bowl or fork. 
 The stem and the enlarged end constitute the handle. 
 
 The stem is gradually but slightly increased in width from 
 about the middle of its length towards each end, the swell be- 
 ing more sudden where it joins the bowl or fork. At the 
 other extremity of the stem, where the enlarged end of the 
 handle commences, a rounded shoulder spreads out on each 
 side. The enlarged end then gradually spreads out on each 
 side in concave lines. These lines afterwards gradually be- 
 come convex to the widest part of the enlarged end. 
 
 From this point they run back and inwards, and they fin- 
 ally unite to form a nearly semicircular end. 
 
 Along each end of the stem, and of the enlarged end of 
 the handle, there is a small rounded moulding, and just within 
 this, a second moulding, and at the rounded shoulders, these 
 mouldings, which look like wires, are united by two rosettes, 
 having somewhat the appearance produced by twisting to- 
 gether the ends of wires, to unite them. At the end of the 
 enlarged end of the handle, the two sets of mouldings from 
 each side are twined into a rosette, the two rosettes coming in 
 contact in the middle of the width of the handle, and a small 
 rounded tip making the central finish. 
 
 Between the two inner mouldings, the surface is swelled,, 
 such swell being gradually flattened from the stem towards 
 the widest part of the enlarged end of the handle. 
 
 The patent claims "the design herein specified for the 
 handles of spoons and forks, as set forth and represented." 
 
 The bill alleges that the defendant has infringed the pat- 
 ent by selling spoons and other articles embodying the inven- 
 tion covered by the patent. The infringement is denied. 
 
■32 CASES DECIDED BY U. S. COURTS. 
 
 Some of the articles sold by the defendant have been con- 
 structed, in design, in accordance witli letters patent granted 
 to Le Eoy S. White, January 15th, 186T, for a design for the 
 handles of spoons and forks, and the rest of them have been 
 constructed, in design, in accordance with letters patent 
 granted to the said White, March 31st, 1868, for a design for 
 the handles of spoons and forks. 
 
 In the patent of 1867 to White, the handle is made with a 
 comparatively long and narrow stem or shank, and with low 
 rounded shoulders upon its side edges, at the points where the 
 handle begins to expand or broaden, and terminates with a 
 small rounded projection at the extreme end. Along the 
 edges of the front and rear side of the handle is formed a sin- 
 gle line, following the contour of the handle, and extending 
 down upon the head of the fork or spoon in the form of a 
 rounded angle, such a,ngle extending further down on the rear 
 than on the front side of the head. Along the sides of the 
 broader part of the handle is formed a second line, terminat- 
 ing at each end with an inward curve and a bead. 
 
 In the space between the end curves of such second lines 
 and the outer line, where the latter follows the outline of the 
 rounded projection on the end of the handle, a shield is formed, 
 having a central longitudinal rib or raised line. There is, 
 also, on each side of the enlarged end of the handle, a short 
 curved line, starting from the end curve of the before-men- 
 tioned second line, and uniting with such line at the broadest 
 part of the handle. 
 
 In the patent of 1868 to White, the stem or shank portion 
 of the handle is made with two rounded formations along its 
 side edges, constituting a raised border, which follows the con- 
 tour of the whole handle. The stem or shank portion forms 
 its junction with the upper or expanded portion of the handJe 
 by a swell on either side, of convex shape. These swells grad- 
 ually merge in concave lines, which give a narrowed configu- 
 ration to the expanded portion of the handle above the swells. 
 Further up, the boundaries are continued by convex lines, 
 which present a wider form, and the spread-out portion finally 
 terminates in a rounded or arched projection at the extreme 
 
GOEHAM MANUFACTURING CO. v. WHITE. 33 
 
 end. Along either side of the broader portion of the handle, 
 within the before-mentioned raised border, is a second line, 
 following, for the most part, the contour of the border, but 
 terminating at each end with an inward curve and a bead. 
 In the space between the upper-end curves of the before-men- 
 tioned second lines and the raised border, where it follows the 
 outline of the projection on the end of the handle, a shield is 
 formed, having a central longitudinal rib or raised line. There 
 are, also, short curved lines, joining the end curves of the 
 before-mentioned second lines with the broadest part of the 
 handle. 
 
 The question to be determined is, whether the designs of 
 the White patents are or are not substantially the same as the 
 design of the plaintiffs' patent. Each design may properly be 
 considered as composed of two elements : the outline which 
 the handle presents to tlie eye when its broader face is looked 
 at, and the ornamentation on such face. 
 
 If the plaintiffs' design be compared with the White de- 
 sign of 1867, a general resemblance is found between such 
 outlines in the two designs. In other words, if the ornamenta- 
 tion on the handle in the plaintiffs' design formed no part of 
 such design, and such design were confined to the form of the 
 outline before mentioned, it would be difficult to say that the 
 plaintiffs' design and the White design of 186Y were not sub- 
 stantially identical. But the moment the ornamentations on 
 the faces of the two handles come to be considered, striking 
 differences appear between the plaintiffs' design and the 
 White design. 
 
 In the former, the outer thread is broken at the end of the 
 handle, at the shoulders, and at the junction of the handle 
 with the bowl ; while, in the latter, such thread is continuous 
 around the entire handle, from the junction of the stem with 
 the bowl or fork, back to the same point, it having there the 
 form of a Gothic arch. 
 
 In the former, the outer thread is, at the shoulders, turned 
 
 inward, to form rosettes, which present the appearance of two 
 
 parts twisted in together ; while, in the latter, the outer thread 
 
 is continuous. In the former, there is, on the stem of the 
 
 s 
 
2i CASES DECIDED BY TJ. S. COURTS. 
 
 handle, on each side, extending from the shoulder to the bowl 
 or fork, an inner thread, parallel with and inside of the outer 
 thread ; while, in the latter, there is no such inner thread. 
 In the former, the inner threads on the enlarged end of the 
 handle turn outwards from each other towards the end of the 
 handle, so as to form diverging scrolls ; while, in the latter, 
 such inner threads, as they approach the end of the handle, 
 turn inwards and form re-entering scrolls. In the former, the 
 scrolls of the inner threads form, at the end of the handle, a 
 part of the outline boundary of the handle ; while, in the 
 latter, such scrolls are entirely inside of such outline bound- 
 ary. In the former, the end of the handle is formed by a lip 
 inserted between the two diverging scrolls, into which the 
 inner threads are formed ; while, in the latter, the continuous 
 outer thread forms such extreme end. In the latter, a figure 
 in the form of a shield is inserted between the scrolls, into 
 which the inner threads are formed and the outer thread ; 
 while, in the former, no sncli figure is found, and no place 
 exists where it could be inserted. In the latter, there is, on 
 each side, a third and short thread, extending from the said 
 scroll to the widest part of the handle ; while no such thread 
 is found in the former. In the former, the inner thread on 
 the enlarged end of the handle abuts, at the shoulder next 
 the stem, against the scroll or rosette, into which the outer 
 thread is there formed, and looks as if it were a continuation 
 of the outer thread on the stem, passed under the said scroll ; 
 while, in the latter, the inner thread on the enlarged end of 
 the handle is, at the shoulder, turned into a scroll or rosette, 
 and has no appearance of being a continuation of the outer 
 thread on the stem. In the former, the inner threads on the 
 stem unite in a swell or bass near the bowl or fork ; while no 
 fiuch swell or bass is found in the latter. It is, also, to be 
 noted, that, in the former, the outline at the end of the en- 
 larged end of the handle has the form of a portion of a trifoil, 
 while, in the latter, it has the form of a Gothic arch ; and 
 that, in the former, the surface of the enlarged end between 
 the threads is swelled between the shoulders, and such swell 
 is gradually flattened towards the widest part of the handle, 
 
GOEHAM MANUFACTtJRINa CO. u. WHITE. 35 
 
 SO that the swell at such part is substantially different in ap- 
 pearance from the swell at the shoulders; while, in the latter, 
 'the swell is substantially the same from the shoulders to the 
 broadest part of the enlarged end. 
 
 The differences thus observed between the plaintiffs' de- 
 sign and the White design of 1867, exist, also, between the 
 plaintiffs' design and the White design of 1868. In addition, 
 in the plaintiffs' design, the contour of the enlarged end of 
 the handle spreads outward progressively from the shoulders 
 until the widest part of the handle is reached ; while, in the 
 White design of 1868, the sides of the enlarged end tend in- 
 ward for a distance after leaving the shoulders, and then spread 
 outward to the widest part. 
 
 From the comparisons thus instituted, it appears that the 
 plaintiffs' design and the White design of 1867 are, in what 
 has been called outline, very much alike, while they differ 
 from each othtr, in a marked manner, in what has been called 
 ornamentation ; that the plaintiffs' design and the White de- 
 sign of 1868 differ from each other, in a marked manner, both 
 in outline and in ornamentation; and that the two White de- 
 signs differ from each other, in outline, in a marked manner, 
 while they scarcely differ at all from each other iu orna- 
 mentation. 
 
 There can be no doubt, on the proofs, that the plaintiffs' 
 design is a very meritorious and salable one. The entire 
 strength of their case, on the question of infringement, is put 
 on the claimed ground, that the resemblance between their 
 design and each of the two designs of White is such as to mis- 
 lead ordinary purchasers and casual observers, and to induce 
 them to mistake the one design for the other. It is urged, 
 that the merit of a design appeals solely to the eye, and that, 
 if the eye of an ordinary observer cannot distinguish between 
 two designs, they must, in law, be regarded as substantially 
 alike. In the present case, it is claimed that the eye of the 
 ordinary observer is and will be deceived, when looking at a 
 handle of the plaintiffs' design and a handle of either of the 
 designs of White, because, in addition to the resemblance in 
 contour, the handles have all of them a threaded pattern 
 
36 OASES DECIDED BY U. S. COURTS. 
 
 around the edges, and small knobbed ornamentations at the- 
 shoulders, and small knobbed ornamentations near the end, 
 and a pointed projection at the end, and that the general 
 effect on the eye of the ordinary observer is not and will not 
 be modified by the differences which have been pointed out. 
 
 It is impossible to assent to the view, that the test, in re- 
 gard to a patent for a design, is the eye of an ordinary observer. 
 The first question that would arise, if such a test were to be 
 admitted, would be, as to what is meant by " an ordinary ob- 
 server," and how he is to exercise his observation. One of 
 the witnesses for the plaintiffs testifies, that the plaintiffs' 
 design and the White design of 1867 are sufiiciently alike to 
 mislead ordinary purchasers as to their identity, but not on 
 a second examination, and that, if an ordinary purchaser did 
 not have before him a sample of the plaintiffs' design, he would 
 be apt to consider the White design of 1867 to be the same 
 pattern as the plaintiffs' design. 
 
 Another of the witnesses for the plaintiffs states, that he 
 does, not think that an ordinary 'observer would notice any 
 difference between the two designs, on a casual observation. 
 The expert examined for the plaintiffs testifies, that, in saying 
 that the White designs are substantially identical with the 
 plaintiffs' design, he means such an identity as would deceive 
 him, when going, as a purchaser, to ask for one spoon and 
 being shown another ; and that, when he saw articles of the 
 plaintiffs' design and of the White design of 1867 separately,, 
 he took them to be of the same design, until he laid them side 
 by side and compared them minutely. 
 
 The same principles which govern in determining the 
 question of infringement in respect to a patent for an inven- 
 tion connected with the operation of machinery, must govern 
 in determining the question of infringement in respect to a 
 patent for a design. A design for a configuration of an 
 article of manufacture is embraced within the statute, as a 
 patentable design, as well as a design for an ornament to be 
 placed on an article of manufacture. 
 
 The object of the former may solely be increased utility, 
 while the object of the latter may solely be increased gratifi- 
 
GORHAM MANUFACTURING CO. ». "WHITE. 37 
 
 ■icatioii to a cultivated taste, addressed througli the eye. It 
 would be as reasonable to say, that equal utility should be the 
 test of infringement in the first case, as to say that equal ap- 
 preciation by the eye shoiild be the test of infringement in 
 the latter case. There must be a uniform test, and that test 
 can only be, as in the ease of a patent in respect to machinery, 
 substantial identity, not in view of the observation of a per- 
 son whose observation is worthless because it is casual, heed- 
 less and unintelligent, and who sees one of the articles in 
 question at one time and place, and the other of such articles 
 at another time and place, but in view of the observation of a 
 person versed in the business of designs in the particular trade 
 in question — of a person engaged in the manufacture or sale 
 of articles containing such designs — of a person accustomed 
 to compare such designs one with another, and who sees and 
 examines the articles containing them, side by side. 
 
 The question is not, whether one design will be mistaken 
 for another by a person who examines the two so carelessly 
 as to be sure to be deceived, but whether the two designs can 
 be said to be substantially the same, when examined intel- 
 ligently, side by side. There must be such a comparison of 
 the features which make up the two designs. As against an 
 existing patented design, a patent for another design cannot 
 be withheld because, to a casual observer, the general appear- 
 ance of the latter design is so like that of the earlier one as 
 to lead him, without proper attention, to mistake the one for 
 the other. The same test must be applied on the question of 
 infringement. 
 
 Applying these principles to the evidence in this case, and 
 comparing the designs of White with the plaintiffs' design, it 
 is satisfactorily shown, by the clear weight of testimony, that 
 th;e designs of White are not substantially the same as the 
 plaintiffs' design. The strength of the testimony of the 
 witnesses on the part of the plaintiffs themselves, leads to 
 this conclusion. The substance of the evidence of the most 
 intelligent of them, persons in the trade, is merely to the 
 'effect, that the White designs are not substantially the same 
 .as the plaintiffs' design, but were intended to appear to be the 
 
38 CASES DECIDED BY U. S. COURTS. 
 
 same to an ordinary purchaser, and will so appear to him, hut 
 that a person in the trade will not he deceived, hy the resem- 
 blance, into purchasing an article of the one design for an 
 article of the other. 
 
 A patent for a design, like a patent for improvement in 
 machinery, must he for the means of producing a certain re- 
 sult or appearance, and not for the result or appearance itself. 
 The plaintiffs' patent is for their described means of produc- 
 ing a certain appearance in the completed handle. Even if 
 the same appearance is produced by another design, if the 
 means used in such other design to produce the appearance 
 are substantially different from the means used in the prior 
 patented design to produce such appearance, the later design 
 is not an infringement of the patented one. It is quite clear, 
 on a consideration of the points of difference before enume- 
 rated, between the plaintiffs' design and the designs of "White, 
 that each of the latter is substantially different from the for- 
 mer, in the means it employs to produce the appearance it 
 presents. 
 
 Such is the undoubted weight of the evidence, and such 
 is the judgment of the court. 
 
 The bill must be dismissed, with costs. 
 
 Charles M. Keller and Charles F. Blake, for the plaintiffs. 
 George Crifford, for the defendant. 
 
GOBHAM MANUFACTURING CO. v. WHITE. 39 
 
 THE GOEHAM MANUFAOTUEING COMPANY,, 
 APPELLANT, v. GEOEGE 0. WHITE. 
 
 [U. S. Supreme Court, December Term, 1871.] 
 
 The letters patent to John Gorham, Gorham Thurber, and Lewis Dexter, 
 Jr., dated July 16, 1861, for " a design for the handles of table spoons- 
 and forks," are infringed by articles made in accordance with the let- 
 ters patent to Le Roy S. White, datedJJanuary 15, 1867, for a " design 
 for spoon handles, fork handles, &c. ;" and by articles made in accord- 
 ance with the letters patent to Le Roy S. White, dated March 31, 1868. 
 for a " design for spoon, fork and other handles." 
 
 " The acts of Congress which authorize the grant of patents for designs, 
 were plainly intended to give encouragement to the decorative- arts. 
 They contemplate not so much utility as appearance, and that not as 
 an abstract impression or picture, but an aspect given to those objects 
 mentioned in the acts." 
 
 " The thing invented or produced, for which a patent is given, is that 
 which gives a peculiar or distinctive appearance to the manufacture or 
 article to which it may be applied or to which it gives form.'' 
 
 " It is the appearance itself, no matter by what agency caused, that con- 
 stitutes mainly, if not entirely, the contribution to the public which, 
 the law deems worthy of recompense." 
 
 " To speak of the invention as a combination or process, or to treat it as. 
 such, is to overlook its peculiarities." • 
 
 " The controlling consideration is the resultant effect." 
 
 " The true test of identity of design * * must be sameness of appear- 
 ance ; and mere difference of lines in the drawing or sketch, a greater 
 or smaller number of lines, or slight variances in configuration, if in- 
 sufficient to change the effect upon the eye, will not destroy the sub- 
 stantial identity." 
 
 " Experts, * are not the persons to be deceived." " If in the eye of 
 an ordinary observer, giving such attention as a purchaser usually 
 gives, two designs are substantially the same — if the resemblance is 
 such as to deceive such an observer, inducing him to purchase one, 
 supposing it to be the other, the first one patented is infringed by the 
 other." 
 
 Mr. Justice Steong delivered the opinion of the court. 
 The complainants are the owners of a patent granted on 
 
40 CASES DECIDED BY U. S. COURTS. 
 
 the 16tli day of July, 1861, to John Gorham, Gorham 
 Thurber, and Lewis Dexter, Jr., for a new design for the 
 handles of table spoons and forks, and their bill charges that 
 the patent has been infringed by the defendant. The validity 
 of the patent is not denied, nor is it controverted that the de- 
 fendant has sold spoons and forks which had upon them de- 
 signs bearing some resemblance to the design described in 
 the complainants' patent. 
 
 But it is contended that none of the designs on these 
 articles thus sold, are substantially the same as the design 
 covered by the patent, and that they are all independent of 
 anything secured to Gorham, Thurber and Dexter, the pat- 
 entees. 
 
 The sole question, therefore, is one of fact. Has there 
 been an infringement ? Are the designs used by the defend- 
 ant substantially the same as that owned by the complainants ? 
 To answer these questions correctly, it is indispensable to 
 understand what constitutes identity of design, and what 
 amounts to infringement. 
 
 The acts of Congress which authorize the grant of patents 
 for designs were plainly intended to give encouragement to 
 the decorative arts. They contemplate not so much utility as 
 appearance, and that not an abstract impression or picture, 
 but an aspect given to those objects mentioned in the acts. 
 
 It is a^new and original design for a manufacture, whether 
 of metal or other material; a new and original design for a 
 bust, statue, bas-relief, or composition in alto or basso relievo ; 
 a new or oi-iginal impression or ornament to be placed on any 
 article of manufacture ; a new and original design for the 
 printing of woolen, silk, cotton or other fabrics ; a new and 
 useful pattern, print or picture, to be either worked into or on 
 any article of manufacture ; or a new and original shape or 
 configuration of any article of manufacture. It is one or all 
 of these that the law has in view; and the thing invented or 
 produced, for which a patent is given, is that which gives a 
 peculiar or distinctive appearance to the manufacture or 
 article to which it may be applied or to which it gives form. 
 The law manifestly contemplates that giving certain new and 
 
GORHAM MANDFACTUUING CO. v. "WHITE. 41 
 
 original appearances to a manufactured article may enhance 
 its salable value, may enlarge the demand for it, and may be 
 a meritorious service to the public. It therefore proposes to 
 secure, for a limited time, to the ingenious producer of those 
 appearaices, the advantages flowing from them. Manifestly, 
 the mode in which those appearances are produced, has very 
 little, if anything, to do with giving increased salableness to 
 the article. It is the appearance itself which attracts the 
 attention and calls out favor or dislike. It is the appearance 
 itself, therefore, no matter by what agency caused, that con- 
 stitutes mainly, if not entirely, the contribution to the public 
 which the law deems worthy of recompense. 
 
 The appearance may be the result of peculiarity of con- 
 figuration, or of ornament alone, or of both conjointly ; but, 
 in whatever way produced, it is the new thing or product 
 which the patent law regards. To speak of the invention as 
 a combination or process, or to treat it as such, is to overlook 
 its peculiarities. 
 
 As the acts of Congress embrace only designs applied or 
 to be applied, they must refer to finished products of inven- 
 tion rather than to the process of finishing them or to the 
 agencies by which they are developed. A patent for a pro- 
 duct is a distinct thing from a patent for the elements enter- 
 ing into it, or for the ingredients of which it is composed, or 
 for the combination that causes it. We do not say that in 
 determining whether two designs are substantially the same, 
 difi'erences in the lines, the configuration, or the modes by 
 which the aspects they exhibit, are not to be considered ; but 
 we think the controlling consideration is the resultant efiect. 
 Such was the opinion of Lord Chancellor Hatherly in McCrea 
 V. Holds worth, 6 Cha. Ap. Cases, Law Reports, 418. That 
 was a suit to restrain an infringement of a design for orna- 
 menting a woven fabric. The defence was a denial that the 
 design used by the defendants was the same as that to which 
 the plaintiff was entitled. 
 
 The ornament on both was, in part, a star, but on one it 
 was turned in an opposite direction from that in the other ; 
 yet the effect of the ornament was the same to the eye. 
 
42 CASES DECIDED BY U. S. COUBTS. 
 
 The Lord Chancellor held the important inquiry was, 
 whether there was any difference in the effect of the designs, 
 not whether there were differences in the details of ornament. 
 " If," said he " The designs are used in exactly the same man- 
 ner, and have the same effect, or nearly the same effect, then, 
 of course, the shifting or turning round of a star, as in this 
 particular case, cannot be allowed to protect the defendants 
 from the consequences of the piracy." 
 
 This seems most reasonable, for, as we have said, it is the 
 effect upon the eye which adds value to articles of trade or 
 commerce. So in Holdsworth v. McCrea, 2 App. Gas., 
 House of Lords, 388, Lord "Westbury said : " Now, in the 
 case of those things, in which the merit of the invention lies 
 in the drawing, or in forms that can be copied, the appeal is 
 to the eye, and the eye alone is the judge of the identity of 
 the two things. "Whether, therefore, there be piracy or not, 
 is referred to an unerring judge — namely, the eye — which 
 takes the one figure and the other figure, and ascertains 
 whether they are or are not the same." 
 
 This was said in a case where there was nothing but a 
 drawing of the design. 
 
 We are now prepared to inquire what is the true test of 
 identity of design. Plainly, it must be sameness of appear- 
 ance ; and mere difference of lines in the drawing or sketch, 
 a greater or smaller number of lines, or slight variances in con- 
 figuration, if insufficient to change the effect upon the eye, 
 will not destroy the substantial identity. An engraving 
 which has many lines may present to the eye the same picture 
 and to the mind the same idea or conception as another with 
 much fewer lines. The design, however, would be the same. 
 So a pattern for a carpet or a print may be made up of wreaths 
 of flowers arranged in a particular manner. Another carpet 
 may have similar wreaths arranged in a like manner, so that 
 none but very acute observers could detect a difference ; yet 
 in the wreaths upon one there may be fewer flowers, and the 
 wreaths may be placed at wider distances from each other j 
 surely, in such a case the designs are alike. 
 
 The same conception was in the mind of the designer, and 
 to that conception he gave expression. 
 
GORHAM MAMIFACiTUEING CO. v. WHITE. 45 
 
 If, then, identity of appearance, or, as expressed in Mc- 
 Orea v. Holdsworth, sameness of effect upon the eye, is the 
 main test of substantial identity of design, the only remaining 
 question upon this part of the case is, whether it is essential 
 that the appearance should be the same to the eye of an ex- 
 pert. The court below was of opinion that the test of a pat- 
 ent for a design is not the eye of an ordinary observer. The 
 learned judge thought there could be no infringement unless 
 there was " substantial identity " " in view of the observation 
 of a person versed in designs in the particular trade in ques- 
 tion ; of a person engaged in the manufacture or sale of 
 articles containing such designs, of a person accustomed 
 to compare sach designs, one with another, and who sees 
 and examines the articles containing them side by side." 
 There must, he thought, be a comparison of the features which 
 make up the two designs. With this we cannot concur. 
 Such a test would destroy all the protection which the act of 
 Congress intended to give. 
 
 There never could be piracy of a patented design, for hu- 
 man ingenuity has never yet produced a design, in all its de- 
 tails, exactly like another, so like that an expert could not 
 distinguish them. 
 
 No counterfeit bank note is so identical in appearance with 
 the true that an experienced artist cannot discern a difference. 
 It is said an engraver distinguishes impressions made by the 
 same plate. Experts, therefore, are not the persons to be 
 deceived. 
 
 Much less than that which would be substantial identity 
 in their eyes, would be undistinguishable in the eyes of men 
 generally, of observers of ordinary acuteness, bringing to the 
 examination of the article upon' which the design has been 
 placed that degree of observation which men of ordinary in- 
 telligence give. It is persons of the latter class who are the 
 principal purchasers of the articles to which designs have 
 given novel appearances ; and if they are misled and induced 
 to purchase what is not the article they supposed it to be ; if, 
 for example, they are led to purchase forks or spoons, deceived 
 by an apparent resemblance into the belief that they bear the 
 " Cottage " design, and, therefore, are the production of the 
 
44 CASES DECIDED BY XJ. 6. COURTS. 
 
 holders of the Gorham, Thurber, and Dexter patent, when, in 
 fact, they are not, the patentees are injured, and that advan- 
 tage of a market which the patent was granted to secure, is 
 destroyed. 
 
 The purpose of the law must be effected, if possible ; but 
 plainly, it cannot be if, while the general appearance of the 
 design is preserved, minor differences of detail in the manner 
 in which the appearance is produced, observable by experts, 
 but not noticed by ordinary observers, by those who buy and 
 use, are sufficient to relieve an imitating design from condem- 
 nation as an infringement. 
 
 We hold, therefore, that if, in the eye of an ordinary ob- 
 server, giving such attention as a purchaser usually gives, two 
 designs are substantially the same — if the resemblance is such 
 as to deceive such observer, inducing him to purchase one 
 supposing it to be the other — the first one patented is infringed 
 by the other. 
 
 Applying this rule to the facts of the present case, there is 
 very little difficulty in coming to a satisfactory conclusion. 
 The Gorham, Thurber, and Dexter design, and the two de- 
 signs sold by the defendant, which were patented to Le Koy 
 S. White, one in 1867 and the other in 1868, are alike the 
 result of peculiarities of outline or configuration and of orna- 
 mentation. These make up whatever is distinctive in appear- 
 ance, and of these the outline or configuration is most im- 
 pressive to the eye. Comparing the figure or outline of the 
 plaintiffs' design with that of the White design of 1867, it is 
 apparent there is no substantial difference. This is in the 
 main conceded. Even the minor differences are so minute as 
 to escape observation, unless observation is stimulated by a 
 suspicion that there may be diversity. And there are the 
 same resemblances between the plaintiffs' design and the 
 White design of 1868, and, with a single addition, the minor 
 differences are the same. That additional one consists in this. 
 At the upper part of the handle, immediately above the point 
 where the broader part widens from the stem with- a rounded 
 shoulder, while the external lines of both designs are first 
 concave, and then gradually become convex, the degree of 
 
GORHAM MANUFACTURING CO. v, "WHITE. 45 
 
 concavity is greater in the "White design. How much effect 
 this variance has must be determined by the evidence. In all 
 the designs the ornament is, in part, a rounded molding or 
 bead along the edge, with scrolls at the shotdders and near 
 top. There are, however, some diversities in this ornament, 
 which are discoverable when attention is called to them. In 
 the plaintiffs', the bead is interrupted at the shoulders and at 
 the tip by the scrolls, while in both the designs of White it is 
 continued unbroken around the scrolls. In the plaintiffs', the 
 scrolls turn inward at the shoulders, and outward at the tip. 
 In the White design they turn inward both at the shoulders 
 and at the upper end ; but there is the same number of scrolls 
 in all the designs, and they are similarly located, all having 
 the appearance of rosettes. In all, the external bead is formed 
 by a depressed line running near the edge of the handle ; but 
 in the plaintiffs' there is an inner line, making a second very 
 thin bead, nearly parallel to the external bead common to 
 them all. In the White designs, this inner line is wanting on 
 the stem of the handle, though not on the broad part ; but, as 
 the single line is wider, it presents much the same appearance 
 as it would present if divided into two. 
 
 There are other small differences which it is needless to 
 specify. What we have mentioned are the most prominent. 
 *No doubt to the eye of an expert they are all real. Still,, 
 though variances in the ornament are discoverable, the ques- 
 tion remains, Is the effect of the whole design substantially 
 the same ? Is the adornment in the White design used in- 
 strumentally to produce an appearance, a distinct device, or 
 does it work the same result in the same way, and is it, there- 
 fore, a colorable- evasion of the prior patent, amounting, at 
 most, to a mere equivalent ? In regard to this we have little 
 doubt, in view of the evidence. Both the White designs, we 
 think, are proved to be infringements of the Gorham, Thur- 
 ber, and Dexter patent. A large number of witnesses familiar 
 with designs, and most of them engaged in the trade, testify 
 that, in their opinion, there is no substantial difference in the 
 three designs, and that ordinary purchasers would be likely 
 to mistake the White design for the " Cottage," — viz., that of 
 
46 CASES DECIDED BY U. S. COURTS. 
 
 the plaintiffs. This opinion is repeated in many forms of ex- 
 pression — as, that they are the same pattern ; that the essential 
 features are the same ; that seven out of ten customers who buy 
 silver ware would consider them the same ; that manufacturers, 
 as well as customers, would consider them the same ; that the 
 trade generally would so consider them ; that, though there 
 are differences, they would not be noticed without a critical 
 examination ; that they are one and the same pattern, &c., 
 &c. This is the testimony of men who, if there were a sub- 
 stantial difference in the appearance or in the effect, would 
 most readily appreciate it. Some think the White designs 
 were intended to imitate the other, and they all agree that 
 they are so nearly identical, that ordinary purchasers of silver 
 ware would mistake one for the other. On the other hand, 
 a large number of witnesses have testified on behalf of the 
 defendant that the designs are substantially unlike ; but when 
 they attempt to define the dissimilarity, they specify only the 
 painor differences in the ornamentation, of which we have 
 heretofore spoken. Not one of them denies that the appear- 
 ance of the designs is substantially the same, or asserts that 
 the effect upon the eye of an observer is different, or that or- 
 dinary purchasers, or even persons in trade, would not be led 
 by their similarity to mistake one'for another. Their idea of 
 what constitutes identity of design seems to be that it is the ' 
 possibility of being struck from the same die, which, of course, 
 cannot be if there exists the slightest variation in a single line. 
 They gire little importance to configuration, and none to 
 general aspect. Such evidence is not an answer to the com- 
 plainants' case. It leaves undisputed the facts that, whatever 
 differences there may be between the plaintiffs' design and 
 those of the defendant, in details of ornament, they are still 
 the same in general appearance and effect ; so much alike, 
 that in the market and with purchasers, they would pass for 
 the same thing ; so much alike, that even persons in the trade 
 would be in danger of being deceived. 
 
 Unless, therefore, the patent is to receive such a construc- 
 tion that the act of Congress will afford no protection to a 
 designer against imitations of his invention, we must hold 
 
GORHAM MANUFACTURING CO. ». WHITE. 47 
 
 that the sale by the defendant of spoons and forks bearing 
 the designs patented to Le Eoy S. "White in 186T and 1868, 
 is an infringement of the complainants' rights. 
 
 The decree of the Circuit Court is reversed, and the cause 
 is remitted, with instructions to enter a decree in accordance 
 ■with tliis opinion. 
 
 Justices Miller, Field, and Bradley dissent in this case. 
 
48 CASES DECIDED BY U S. COURTS. 
 
 Copy of the SpecifioaUon of the Letters Patent in Issue in 
 The Oorham Manufaoi/urvng Company v. George C. 
 White : 
 JoHH GoKHAM, GoBHAM Thurbbr, and Lewis Dbxteb, Jr., of Prov- 
 idence, R. I. — Letters Patent for a Design No. 74, dated July 
 16, 1861. — Handles for Table Spoons and Forks. 
 SPECIPIOATIOIT. 
 To all Whom it may Ooncern : 
 
 Be it known, that we, John Grorham, Grorham ThurlDer, and Lewis 
 Dexter, Jr., of Providence, in the State of Rhode Island, have invented 
 or produced a new and original design for the handles of table spoons 
 and forks ; and we do hereby declare that the following is a full, clear, 
 and exact description thereof, reference being had to the accompanying 
 drawings making part of this specification, in which — 
 
 Fig. 1 is a plan of the upper surface ; and 
 
 Fig. 3, a like view of the under surface. 
 
 Figs. 3 and 4 are cross sections, taken at the narrowest and at the 
 widest parts of the handle. 
 
 In figures 1 and 3 of the accompanying drawings a represents the 
 stem of the handle either of a spoon or fork, and S the enlarged end 
 thereof. The stem is gradually but slightly increased in width from 
 about the middle of its length towards each end, the swell being more 
 sudden at c, where it joins the bowl or fork. At the rear extremity of 
 the stem, where the enlarged part b commences, it spreads out on each 
 side with a founded shoulder d d, and then gradually spreads out in 
 concave lines as at e e, these lines gradually becoming convex to the 
 widest part, where they run back and inwards, as at//, finally uniting 
 to form a nearly semicircular end. Along each edge there is a smaU 
 rounded moulding g ff, and just within this a row of beads h h, and at 
 the shoulders d d the mouldings g g, that look like wires, are united by 
 two rosettes, having somewhat the appearance produced by twisting 
 together the ends of wires to unite them ; and at the rear end the mould- 
 ings from each side are turned into a rosette, the two rosettes, as at i i, 
 coming in contact with a small rounded tip j making the central 
 finish. Between the rows of beads the surface is swelled, as at Tc, 
 figure 4, this swell being gradually fiattened towards the widest part of 
 the handle. 
 
 What we claim as new, and desire to secure by letters patent, is the 
 design herein specified for the handles of spoons and forks, as set forth 
 and represented. 
 
 JOHN GORHAM, 
 GORHAM THURBER, 
 
 Witnmea: LEWIS DEXTER, Jr. 
 
 Albert M. Hewitt, 
 Henry Martin. 
 
GORHAM, THURBER &, DEXTERS 
 D RAWING . 
 
 ^ Fig./. 
 
 1^.2. 
 
% 
 
 w 
 
 d 
 
 ft 
 
 ^ 
 
GORHAM MANUFACTURING CO. o. WHITE, 49 
 
 Le Koy S. White, of Waterbury, Connecticut. — Design No. 3,551, 
 dated January 15, 1867. — Design eoe the Handle of a Foek ok 
 Spoon. 
 
 SPECIFICATIOJSr. 
 
 To all 'Whom it may Ooneem : 
 
 Be it known that I, L. S. White, of Waterbury, in the county of New 
 Haven, and State of Connecticut, have invented a new and improved 
 design for spoon handles, fork handles, &c. ; and I do hereby declare 
 that the following is a full, clear, and exact description thereof, reference 
 being had to the accompanying drawings, forming part of this specifica- 
 tion, in which — 
 
 Figure 1 is a fi'ont view, and 
 
 Figure 2 is a rear view of the same. 
 
 Similar letters of reference indicate like parts. 
 
 The handle is made with a comparatively long and narrow stem or 
 shank, and with low rounded shoulders upon its side edges, at the points 
 where the said handle begins to expand or broaden, and terminates with 
 a small rounded projection at the extreme end. Along the- edges of the 
 front and rear sides of the handle is formed a single line A, following 
 the contour of the handle, and extending down upon the end of the 
 fork or spoon in the form of a rounded angle B ; this angle extending 
 further down upon the rear than upon the front side of said head. 
 Along the sides of the broader part of the handle is formed a second 
 line C, terminating at each end with an inward curve and bead, as 
 shown in figs. 1 and 3. In the space between the end curves of the lines 
 C. and the line A, where it follows the outline of the rounded projection 
 upon the end of the handle, is formed a shield D, having a central 
 longitudinal rib or raised line, as shown. E are short, curved lines, 
 starting from the end curves of the lines 0, and uniting with said lines 
 at the broadest part of the handle, as shown in figs. 1 and 3. 
 
 I claim as new, and desire to secure by letters patent — 
 
 The design for fork handles, spoon handles, &c., herein shown and 
 described. 
 
 LE EOT S. WHITE. 
 Witnesses : 
 
 David B. Hamilton, 
 Chaklbs a. Hamilton. 
 
50 CASES DECIDED BY U. S. COURTS. 
 
 Lb Rot S. White, of Waterbury, Connecticut. — Design No. 3,993, 
 dated Marct 3] , 1868. — Design fob a Spoon ob. Fork Handle. 
 
 SPECIFICATION. 
 To all Whom it may Concern: 
 
 Be it known that I, Le Roy S. White, of Waterbury, in the county of 
 New Haven, and State of Connecticut, have invented a new and im- 
 proved design for spoon, fork, and other handles, of which the follow- 
 ing is a full, clear, and exact description, reference being had to the 
 accompanying drawing, forming part of this specification, and which 
 represents a front view of a spoon or other handle, or same in part 
 fashioned to embrace my new design. 
 
 The stem or shank portion. A, of the handle may be of any suitable 
 length, and is made with two rounded formations along its side edges, 
 constituting a raised border a, that follows the contour of the whole 
 handle, and is the same front and rear of the latter as are the several 
 ornamental configurations on or of the handle. The stem or shank por- 
 tion, A, forms its junction with the upper or expanded portion of the 
 handle by a sweU &, on either side, of convex shape, that gradually 
 merge or meet concave lines or boundaries c, which give a narrowed 
 configuration to the expanded portion of the handle above the swells 6, 
 •and afterwards, or further up, where the boundaries are continued by 
 convex lines d, a wider fonn, such spread-out portion finally terminating 
 in a rounded or arched projection e, at the top or extreme end. Along 
 either side of the broader portion B of the handle, within the line or 
 border a, is a second line /, following, for the most part, the contour of 
 the border, but terminating at each end with an inward curve and bead, 
 as shown ia the drawing. In the space between the upper end curves of 
 ■the lines/ and border a, where it follows the outline of the projection e, 
 upon the end of the handle, is formed a shield g, having a central 
 longitudinal rib or raised line, as shown. There are also short curved 
 lines ^, joining the end curves of the lines/with the broadest part of the 
 handle, as represented in the drawing. 
 
 What is here claimed, and desired to be secured by letters patent 
 is — 
 
 The design for fork, spoon, or other handles, as herein shown and 
 -described. 
 
 LE ROY S. WHITE. 
 
 C. A. Hamilton, 
 Geo. E. Berry. 
 
COLLENDER v. GRIFFITH 51 
 
 HUGH W. COLLENDER v. WM. H. GEIFFITH. 
 
 THE SAME v._ THE SAME. 
 
 [U. 8. Circuit Ct., South. Dist. N. Y., 1873.] 
 
 The defendant ■will not be permitted on the hearing to read depositions 
 
 showing prior knowledge and use of the thing patented by persons 
 
 whose names are not given in his answer. 
 It being shown that tables with the sides beveled inward from the top 
 
 have been known before, a patent is void which claims the design of 
 
 a billiard table thus constructed, in order that the player may advance 
 
 his foot further under it. 
 It is a mere question of judgment, not invention, how far the bevel 
 
 shall be carried, and a patent for the design of a billiard table is not 
 
 rendered valid because a much deeper bevel is shown in it than has 
 
 been used in other tables. 
 If a patent for a design includes as a part thereof the ornamentation 
 
 shown in it, it is no infringement to use the principal figure without 
 
 the ornamentation. 
 A person who publishes by way of advertisement an engraving of an 
 
 article he has on sale, cannot by copyrighting it prevent others who 
 
 have an equal right to sell the article trom using a similar engraving 
 
 in advertising it. 
 
 "WooDETiFF, J. These two suits were submitted togetlier 
 upon the same proofs. The only question argued by counsel 
 was, whether the testimony of certain witnesses called to 
 prove the want of novelty in the alleged invention or new 
 design, and who mention the knowledge and use thereof by 
 persons not named in the defendant's answer, is competent. 
 On that question I must hold that the evidence of the knowl- 
 edge and use by persons not so named is incompetent, and 
 must be rejected. The court has no discretion on the subject. 
 Such knowledge and use is not a defense, under the statute, 
 available to the defendant. It is therefore rejected. The 
 counsel, on the argument of the question above stated, sub- 
 mitted the cases on the merits on briefs then or afterwards 
 
52 CASES DECIDED BY U. S. COURTS. 
 
 submitted. The one suit is founded upon a patent for a de- 
 sign for a billiard table ; the other upon a copyright of an 
 engraving exhibiting a view of the same billiard table, with 
 its ornamentation by carving, &c. 
 
 As to the first, I am of opinion that, in view of the state 
 of the art and the proof of the prior existence and use of bil- 
 liard tables similar in form, there was no ground for such a 
 patent. In truth, as a form of construction or configuration, 
 it was not novel in any such sense that its adoption consti- 
 tuted invention. This is proved without the testimony which 
 I have above rejected as inadmissible under the pleadings. It 
 is to be remembered this is not a patent for the billiard table 
 itself, or for anything new in its actual construction, but only 
 for a design embracing its shape or configuration, by what- 
 ever means it is effected. 
 
 The principal, if not the sole, feature claimed is, the form 
 of beveled sides and ends. Tables and designs for tables 
 having such beveled sides and ends, both straight or in the 
 form technically called " ogee " are shown to be old and in 
 public use long before the complainant's alleged invention. 
 This is so clearly established that the argument in behalf of 
 the complainant proceeds mainly upon the ground that the 
 inclination or bevel is greater in the complainant's design 
 than in the others. It is at least doubtful whether that is true 
 as to some of such prior designs ; but, in any view of that 
 point, the subject was one of degree of inclination and bevel, 
 to be determined as matter of judgment — in view of the pur- 
 pose such bevel is adapted to serve, and not matter of new 
 discovery or invention. It embraced no new idea. In either, 
 the inward inclination of the lower part of the sides of the 
 table, receding from the outer edge of the top or cushion bar, 
 enabled the player to stand with one knee partially under 
 the table, for convenience in some part of his playing. The 
 extent of such recess was mere matter of judgment in the 
 manufacture, looking to the purpose for which it was desir- 
 able. Had the complainant invented something new in the 
 mode of construction of the sides of the table — some new 
 device by the use of which a table could be constructed with 
 
COLLENDER o. GRIFFITH. 53 
 
 a greater bevel or inward inclination than was before prac- 
 ticable, or a new device by which a new result was produced 
 in making any beveled side — that might perhaps have been 
 secured to him ; but I think it clear that a mere design which 
 is practically a suggestion that a greater degree of inclination 
 of the sides will make the table more convenient, when other 
 tables already existed which, with a view to the same useful 
 result in kind, were constructed with a similar bevel, is not 
 invention, nor the proper subject of a patent. If it be pos- 
 sible, however, to include in the complainant's patent not 
 merely the form or configuration of a billiard table, but its 
 peculiar ornamentation, then the complainant must fail, be- 
 cause the defendant does not use the complainant's ornament- 
 ation. I state this hypothetically, because, unless the com- 
 plainant be confined to the specific ornamentation which his 
 design exhibits, then there is nothing in that feature. 
 
 As to the copyright, these views are in a large degree 
 applicable to that, also ; and, besides, the engraving claimed 
 to be the subject of copyright is not a work of art, print, 
 lithograph, or engraving having any value or use as such. It 
 is a mere copy of what the complainant has patented as. a 
 design, and constitutes the mode in which complainant adver- 
 tises his tables. The defendant, having the right to make his 
 own tables as he does make them, has an equal right to adver- 
 tise them by showing the public their appearance by engrav- 
 ing, lithograph, or photograph. 
 
 The bill of complaint must be dismissed with costs. 
 
64 CASES DECIDED BY U. S. COURTS. 
 
 Copy of the Specification of the Letters Patent in issue, in 
 Hugh W. Collender v. Wm. H. Griffith. 
 
 HtroH W. CoLi/BNDEE, of New York, N. Y. — Design No. 4,973, dated. 
 June 6, 1871..— Design pok a Billiabd Table. 
 
 To all Whom, it may Concern : 
 
 Be it known that I, Hugh W. Collender, of New York city, county 
 of New York and State of New York, have invented certain new and. 
 useful improvements in the shape and design of billiard tables ; and do 
 hereby declare that the following is a full and exact description 
 thereof, reference being had to the accompanying drawing making part 
 of this application. 
 
 My invention relates to a new shape and design for billiard tables. 
 
 Previous to my invention, billiard tables have generally been made 
 with the sides to extend down vertically from the lower side of the rail. 
 In this shape, since the body of the table has to be rather deep to give 
 strength to it, it is rather inconvenient for the player to get his leg in a 
 position which will enable him to reach over the table, and hence this 
 form of construction is objectionable. 
 
 This objection has, I believe, been partially overcome by a design of 
 some of the French tables, the deep side" pieces of which run downward 
 in a sort of ogee form; but this shape, composed of curved surfaces, 
 renders the cost of manufacture of the table much greater than is com- 
 pensated for by the advantage of greater convenience to the player. 
 
 I propose by my design to overcome the difficulty found in the shape 
 of body or sides as the tables have been generally made, and render the 
 design and appearance of the table much handsomer, while, at the same 
 time, the cost of manufacture shall not be increased at all. 
 
 In the accompanying drawing I have shown in elevation at figure 1, 
 and in vertical cross section at figure 3, a table of my new design or 
 shape. 
 
 In the drawing — 
 
 A is the body or main frame of the table ; 
 
 B, the bed ; 
 
 e, the cushion rails ; 
 
 d, the legs ; and 
 
 e, the cushions, all of which are made about as usual, except that the 
 main frame is made so that the sides of the body of the table run imder 
 or flare at about an angle of thirty or forty degrees, as shown at/. 
 
 The inclined sides/, it will be seen, are perfect planes, so that the 
 expense of getting out the stuif and putting together and the veneering; 
 
COLLENDER v. GEIFFITH. 65. 
 
 is no more than in the manufacture of the vertical sided tables now gen- 
 erally made. 
 
 The inclined or flared sides / may be ornamented, paneled, &c., ta- 
 any desired extent. 
 
 By reference to the figure drawn at fig. 3, it Will be seen that the- 
 player can so extend his leg under the table, when made as shown, as ta 
 enable him to reach further over the bed, which is a great convenience, 
 and enables the player to easily reach many shots which, on the table as 
 now made, have to be played with the bridge. 
 
 Having clearly shown and described the characteristic features of my 
 new design for billiard tables. 
 
 What I claim, and desire to secure by letters patent, is — 
 
 The design for billiard tables, as herein shown and described. 
 
 In testimony whereof I have hereunto set my hand and seal this 11th 
 day of February, 1871. 
 
 HUGH W. COLLENDER. [l. s.] 
 
 Hbnby N. Brown, 
 W. M. Ebnst. 
 
PART II. 
 
 A COLLECTION OF ALL THE REPORTED CASES, 
 
 BEAKlNa UPON LETTERS PATENT FOE DESIGNS, 
 
 DECIDED IN THEU. S. PATENT OFFICE, 
 
 TO JAmJAEY 1, 1874. 
 
CASES. 
 
 JASOJSr CRANE, Ex parte. 
 
 Appeal from Examiners-in-cMef. April 20, 1869. 
 
 [Commissioners' Decisions, 1869, page 7.] 
 
 In the matter of the application of Jason Okanb, for a patent for a design 
 for a FtTR Sbt Bos. 
 
 Letters patent allowed for the design of an article on the ground of the 
 lutility of the article. 
 
 "The construction which has been given to that act (the act of August 
 29, 1842), by the office, ever since its passage in 1842, is that it relates 
 to designs for ornament merely ; something of an artistic character as 
 contradistinguished to those of convenience or utility." 
 
 " Considerable reflection upon the subject has satisfied me that the ob- 
 jects and intent of the statute extend beyond the limit assigned to it 
 by the office." ' 
 
 " I am unable to perceive any good reasons why designs for utility are 
 no^ fairly and properly embraced within the statute, as well as those 
 relating to ornamentation merely." 
 
 " Whenever there shall be produced by the exercise of industry, genius, 
 eifort and expense, any new and original design, form, configuration 
 or arrangement of a manufactured article, it comes within the provis- 
 ions and objects of the act creating desigQ patents, whatever be its 
 nature, and whether made for ornament merely, or intended to pro- 
 mote convenience and utility." 
 
 FooTE, Commissioner, The applicant designed a paper 
 box, with compartments conveniently arranged for holding 
 each of the articles composing a set of ladies' furs. It is neat 
 in appearance, as well as convenient in use, and has com- 
 
60 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 manded a preference in the market over other boxes for that 
 purpose. 
 
 It was at first claimed that the new arrangement of the 
 compartments was the proper subject of a general patent. 
 This was denied by the office on the ground that, although 
 skill and good taste had been displayed in designing the ar- 
 ticle, it did not come up to what might properly be termed a 
 " new invention." A more limited patent is now asked for 
 the design, and the question is presented whether the case 
 comes within the statute relating to design patents. 
 
 The construction which has been given to that act by the 
 office, ever since its passage in 1842, is that it relates to de- 
 signs for ornament merely; something of an artistic char- 
 acter as contradistinguished to those of convenience or utility. 
 It was upon this view of the statute that the application was 
 rejected by the examiner in charge, and, on appeal, by the 
 board of examiners in chief. No judicial construction has as 
 yet been given to this part of the act. 
 
 Considerable reflection upon the subject has satisfied me 
 that the objects and intent of the statute extend beyond the 
 limit assigned to it by the office. 
 
 It provides, among other things, that any citizen " who 
 by his industry, genius, efforts, and expense, may have in- 
 vented or produced any new and original design for a manu- 
 facture," or * * * " any new and original shape or con- 
 figuration of any article of manufacture," may obtain a patent 
 therefor. It does not say " ornamental " design, or " artistic " 
 shape or configuration, and I am unable to perceive any good 
 reasons why designs for utility are not fairly and properly 
 embraced within the statute as well as those relating to orna- 
 mentation merely. 
 
 The line of distinction between what is useful and what 
 is merely ornamental is, in some cases, very indefinite. By 
 some it is said that any form or design that is most useful, is 
 also most pleasing. It would be impossible, in the view of 
 such persons, to make any improvement in utility that did 
 not at the same time add to the ornamental and artistic. 
 
 I can perceive no necessity for the distinction. There is 
 
JASON CRANE. 61 
 
 a large class of improvements in manufactured articles that 
 are not regarded as n'ew inventions, or as coming within the 
 scope of general patent laws. They add to the market 
 value and salability of such articles, and often result from 
 the exercise of much labor, genius, and expense. They 
 promote the best interests of the country, as well as the 
 creations of inventive talent. It seems to me to have been 
 the intent of Congress to extend to all such cases a limited 
 protection and encouragement. 
 
 Whenever there shall be produced by the exercise of in- 
 dtistry, genius, effort and expense, any new and original de- 
 sign, form, configuration or arrangement of a manufactured 
 article, it comes within the provisions and objects of the act 
 creating design patents, whatever be its nature, and whether 
 made for ornament merely, or intended to promote con- 
 venience and utility. 
 
 The construction given to the statute by the board of 
 appeals seems to me to be erroneous, and I accordingly over- 
 rule their decision. 
 
62 CASES DECIDED IN- THE U. S. PATENT OFFICE. 
 
 B. L. SOLOMON, Ex'r OF MYEE PHINEAS. 
 
 Extension. August 17, 1869. 
 
 [Commissioners' Decisions, 1869, page 49.] 
 
 In the matter of the application of Bitenbt L. Solomoit, executor of the 
 last will and testament of Mteb Phikbas, deceased^ for the extension of 
 a patent for a Design fob an Inkstahd, granted to the said Mybr 
 Phinbas, August 19, 1863. 
 
 It does not follow that because an article embodying or bearing a design 
 is meritorious, the design itself is equally so. 
 
 " The doctrine of the office has been for a long time, that a patent for a 
 design * * * could only be issued for articles possessed of artistic 
 excellence." 
 
 " But it is now held that ' any new and original design, form, con- 
 figuration, or arrangement of a manufactured article,' comes within 
 the scope of the act of 1843 (and of coxirse within that of 1861, sec. 
 11), ' whether made for ornament merely, or intended to promote 
 convenience or utility.' " 
 
 The utility of an article bearing a patented design, taken into account 
 in considering the propriety of extending the patent for the design. 
 
 Hodges, Acting Commissioner. The petitioner has shown 
 his compliance with all the requirements of the office, with 
 perhaps a single exception. It may he questioned whether 
 he has made out that his testator's invention is of sufficient 
 value and importance to the public to entitle him to an ex- 
 tension. 
 
 He has filed a number of affidavits, which fully establish 
 the merit of the inkstand his testator devised and manufac- 
 tured, and satisfy us that, if the article itself was the thing 
 patented, it deserves to be further protected. It does not fol- 
 low, however, that the mere design is equally meritorious. 
 
 The doctrine of the office has been, for a long time, that a 
 patent for a design like the one before us could only be issued 
 for articles possessed of artistic excellence, and that nothing 
 
B. L. SOLOMON. 63 
 
 else could be monopolized under such a patent. The advan- 
 tages obtained in consequence of its mechanical construction 
 were not supposed to enter into consideration. It was the 
 " configuration," and not the construction, which was held to 
 be embraced in the grant. 
 
 Now, the aifidavits filed by the petitioner all take into 
 account, in estimating the utility and value of his intestate's 
 invention, the mechanical advantages of the article as con- 
 structed. 
 
 They instance the ink being protected from the air ; its 
 being supplied automatically to the fountain; the cup for 
 holding a sponge; and other peculiarities of a like nature. 
 Some of the most important of these qualities are as old as 
 the ancient fountain inkstand, and have long been public 
 property; and none of them could be considered, according 
 to the former practice, as constituting any part of the inven- 
 tion, or as enhancing its value. 
 
 It is true that the affidavits also speak of the merit of the 
 design as a design merely, and include that in the estimates. 
 But there is no attempt to discriminate the respective merits, 
 so that it can be seen what valuation was set upon the artistic 
 excellence of the design, as distinguished from its other ad- 
 vantages. If the commissioner were to inquire whether that 
 artistic excellence alone is so great as to justify the extension 
 prayed for, he would have no data upon which he could pro- 
 ceed. 
 
 He could only say that its value is so much when taken 
 together with its usual functions — not what it is worth in it- 
 self. 
 
 But it is now held that " any new and original design, 
 form, configuration, or arrangement of a manufactured arti- 
 cle" comes within the scope of the act of 1842 (and of 
 course within that of 1861, sec. 11), " whether made for orna- 
 ment merely, or intended to promote convenience or utility." 
 
 Under the circumstances, it must be assumed that this is 
 the present doctrine of the office. It has a vital bearing upon 
 the case before us, and gives a new significance and effect to 
 the affidavits which have been filed. The patent under con- 
 
64 OASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 sideration covers, under this rule, not only the beauty of the 
 inkstand in point of form, but also all those advantages, in 
 point of utility and convenience, which resulted from its con- 
 figuration, by which, in this connection, must be intended its 
 construction. 
 
 Some of these are old, it is true, but the combination of 
 the whole is new. 
 
 All the peculiarities enumerated by the affiants unite to 
 give value to the article, and are proper elements to be taken 
 into account in estimating it. And the opinions they give of 
 its value become a just and proper basis upon which the com- 
 missioner can form his own conclusion. They are so full and 
 explicit as to remove all doubt upon this point, in this view 
 of the law. 
 
 The question of value is the only serious one in the case. 
 JSTo other objection seems to exist against granting the prayer 
 of the petitioner, and his testator's patent is, therefore, ex- 
 tended. 
 
"WM. N. BARTHOLOMEW. 65 
 
 WM. N. BAETHOLOMEW, ASSIGNOE TO J. BECK- 
 ENDOKFER, Expa/rte, APPEAL FEOM EXAM- 
 
 IJSTEE-m-CHIEF. 
 
 December 3, 1869. 
 [Commissioner's Decisions, 1869, page 103.] 
 
 In the matter of the application of William N. Baetholomb-w, assignor 
 to J. Bbckbndoefbb, for letters patent for a Design foe Rubbbb 
 Eeasee. 
 
 ■"It would seem to be too plain for argument that the new design, or 
 impression, or shape might be so generic in its character as to admit 
 of many variations, which should embody its substantial characteris- 
 tics and be entirely consistent with a substantial identity of form." 
 
 " I can see no reason, under the law, why designs may not be generic ; 
 why what are called 'broad claims' may not be made to them, and 
 why the doctrine of artistic or aesthetic equivalents may not be ap- 
 plied to them." 
 
 " The practice of the office has not been uniform " as to granting or 
 denying generic claims in design patents. 
 
 " A valid patent may be granted for a new genus or class of ornaments, 
 as well as for speciflc ornaments, though, * * * ^ every species, 
 variety, and individual, having distinct characteristics, under such a 
 genus, might also be patented, the patent being subordinate and 
 tributary to that which covered the class." 
 
 It has been the practice of the office to grant design patents for useful 
 forms as well as for those of artistic excellence. 
 
 " The class of cases named in the act as arising from 'new shape or con- 
 figuration ' includes within it all those new changes of form whi^h 
 involve increase of utility." 
 
 " Modes of operation or construction, principles of action, combinations 
 to secure novelty or utility of movement, or compositions of matter can 
 hardly be said to be ' shapes, configurations or designs.' " 
 
 "Where the sole utility of the new device arises from its new shape or 
 configuration * * it may fairly be included among the subjects 
 which the act of 1842 was designed to protect." 
 
 '" These patents are granted solely for new shapes or forms, and the form 
 being new, it is immaterial by what process that form is attained. 
 5 
 
66 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 The composition of matter or the mode of construction is neither 
 ' design,' ' shape,' nor ' configuration,' and must be protected, if at all, 
 under a patent of another kind." 
 
 FisHEE, Commigsioner. 
 
 Letters patent for designs have increased in importance 
 within the last few years. Formerly, but few were granted ; 
 now, many are issued. To this day they have made so little 
 figure in litigation that but three reported cases are known, in 
 which design patents have come into controversy. "With their 
 increase, questions have arisen concerning their scope and 
 character, which have given rise to dispute and to inquiry as 
 to the correctness of the current practice of the office in this 
 branch of invention. While, on the one hand, it is insisted 
 that the practice has always been uniform, and is therefore 
 now fixed and definite, on the other it is asserted that there 
 has never been, and is not now, any well-defined or uniform 
 practice either in the granting or refusal of design patents. 
 
 The act of 1836 made no provision for the patenting of 
 designs. The earliest legislation upon this subject is found 
 in the act of August 29, 1842, section 3 ; and the only legis- 
 lation upon this subject is found in this section and in section 
 11 of the act of March 2, 1861. 
 
 The definition of the subject-matter, or, in other words, of 
 a " design," is the same in both acts. It is as follows : 
 
 " That any citizen, &c., who, by' his, her, or their own in- 
 dustry, genius, efforts, and expense, may have invented or 
 produced any new and original design for a manufacture, 
 whether of metal or other material or materials, and original 
 designs for a bust, statue, bas-relief, or composition in alto or 
 basso-relievo, or any new and original impression being 
 formed in marble or other material, or any new and useful 
 pattern, print, or picture, to be either worked into or worked 
 on, or printed, or painted, or cast, or otherwise fixed on any 
 article of manufacture, or any new and original shape or con- 
 figuration of any article of manufacture not known or used 
 by others," &c. 
 
 This definition embraces five particulars : 
 
WM. N. BARTHOLOMEW. 6T 
 
 1. A new and original design for a manufacture. 
 
 2. An original design for a bust, statue, &c. 
 
 3. A new and original impression or ornament to be 
 placed on any article of manufacture. 
 
 4. A new and useful pattern, print, or pictui'e, to be 
 worked into or worked on, or printed, or painted, or cast, or 
 otherwise fixed on any article of manufacture. 
 
 5. A new and original shape or configuration of any 
 article of manufacture. 
 
 The first three of these classes would seem to refer to 
 ornament only; the fourth, to ornament combined with 
 utility, as in the case of trade-marks ; and the fifth, to new 
 shapes or forms of manufactured articles, which, for some 
 reason, were preferable to those previously adopted. 
 
 The disputed questions which have thiis far arisen under 
 these definitions, are : 1. What variations may be claimed or 
 covered by the patent, consistently with unity of design ? 2. 
 Is a new shape of an article of manufacture, whereby utility 
 is secured, a subject of protection under this act ? and 3. Is 
 mechanical function of any kind covered by it ? 
 
 As to the first of these questions it seems to have been 
 assumed that the design spoken of in all parts of the sections, 
 referred to covered a fixed, unchangeable figure ; that th& 
 protection of the letters patent did not extend to any varia- 
 tion, however slight, but that such variation constituted a new 
 design, might be covered by a new patent, and might safely 
 be used without infringement of the first. This, it is said, is 
 the correct theory of the law, and has been the uniform ad- 
 judication of the office. 
 
 Neither of these statements is absolutely correct. The law 
 by no means defines a design with such strictness. The lan- 
 guage is, " new and original design for a manufacture," " new 
 and original impression or ornament," "new and original 
 shape or configuration." It would seem to be too plain for 
 argument that the new design, or impression or shape might 
 be so generic in its character as to admit of many variations^ 
 which should embody its substantial characteristics and be 
 
68 CASES DECIDED IN THE IT. S. PATENT OFFICE. 
 
 entirely consistent with a substantial identity of form. Thus, 
 if the invention were of a design for an ornamental 
 button, the face of which was grooved with radial rays, it 
 would seem that the first designer of such a button might 
 properly describe a button of five rays, and, having stated 
 that a greater number of rays might be used, might claim a 
 ■design consisting generally of radial rays, or of "five or 
 more " rays, and that it could not be necessary for him to take 
 out a patent for each additional ray that could be cut upon his 
 button. So, if the design were the ornamentation of long 
 combs by a chain of pearls, it would seem that a claim for 
 such a design might be maintained against one who arranged 
 the pearls either in curved or straight lines, or who used half 
 pearls only, and that such modifications, if they had occurred 
 to the designer, might properly have been enumerated in his 
 specification as possible and equivalent variations. In short, 
 i can see no reason, under the law, why designs may not be 
 generic, why what are called " broad claims," may not be 
 made to .them, and why the doctrine of artistic or sesthetic 
 equivalents may not be applied to them. 
 
 This has been recognized, to a greater or less extent, in the 
 adjudication of the courts, and in the practice of the oifice. 
 One of the reported cases is that of Booth v. G-arelly, 1 
 Blatch. 247. The design is described as consisting of " ra- 
 dially formed ornaments on the face of the molds or blocks 
 • of which the button is formed, combined with the mode of 
 -winding the covering on the same, substantially as set forth, 
 whether the covering be of one or more colors." The speci- 
 fication, in " substantially " setting forth the design, contained 
 this language : " It will be obvious, from the foregoing, that 
 the figures can be changed at pleasure, by giving the desired 
 form to the face of the mold, by depressions and elevations 
 which radiate from a point, whether in the center of the mold 
 or eccentric thereto." In the consideration of the case by the 
 court no objection was made to this statement or claim. In 
 the case of Koot v. Ball, 4 McLean, 180, the learned judge 
 instructed the jury, that " if they should find that the defend- 
 ant had infringed the plaintiff's patent by using substantially 
 
WM. N. BARTHOLOMEW. 69. 
 
 the same device, as ornamental, on the same part of the stovej . 
 they would, of course, find the defendant guilty. To infringe- 
 a patent right, it is not necessary that the thing patented 
 should be adopted in every particular ; but if, as in the present 
 case, the design and figures were suhsta/ntially adopted by the 
 defendants, they have infringed the plaintiff's right. If they 
 adopt the same principle, the defendants are guilty. 
 
 " The principle of a machine is that combination of me- 
 chanical powers which produces a certain result. And, in a 
 case like the present, where ornaments are used for a stove, 
 it is an infringement to adopt the design so as to produce sub- 
 stantially the same appearance." 
 
 It has been the constant practice to grant patents for de- 
 signs for fonts of type, for sets of silver plate, for a series or 
 printers' flourishes, and the like. This class of cases has, 
 always passed without objection. Two other cases which 
 have arisen within the office deserve notice. The first was 
 for a series of miniature shoulder-straps, with emblems de- 
 noting rank, provided with a pin, to be worn under an offi- 
 cer's coat, upon his vest, or as a lady's breastpin. The draw- 
 ing shows eight of these pins, with emblems of rank, varying 
 from that of second lieutenant to major-general ; and the 
 specification, describing the brooch for a second lieutenant, 
 goes on to say : " I propose to introduce on some of them 
 the different ornaments showing the respective ranks of the 
 army, from a major-generajship to a second lieutenancy. See . 
 figures 2, 3, 4, 5, 6, 7, 8." 
 
 The second case was that of an application for a mono- 
 gram visiting card, on which the name was to be inscribed or- 
 printed in the form of a monogram. The applicant filed a, 
 drawing showing a card upon which was a monogram of his 
 own name. In his specification he gives certain rules for* 
 forming such monograms, and then says : " It is manifest 
 that the form of the letters, as well as the letters themselves, 
 can be changed as required by circumstances or the taste of 
 the individual for whom the monogram is designed ; and that 
 the general form and outline of the monogram may be varied, 
 and, indeed, must vary to be adapted to the particular name 
 
YO CASES DECIDED IN THE U. S. PATENT OFFICE.' 
 
 it is required to represent." The claim was for " a mono- 
 gram visiting card, or visiting card upon which the name is 
 inscribed or printed in the form of a monogram, substantially 
 as herein specified." This application was rejected by the 
 examiner and board of examiners-in-chief, but was allowed by 
 the commissioner upon appeal. 
 
 It is true, that, before and since this patent was issued, 
 many patents have been refused for what I have called generic 
 •designs. One man having designed a tack-head ornamented 
 with radial lines, was compelled to take out one patent for his 
 tack with six radial lines, and another for the same tack with 
 •eight. There are other instances of like character, but they 
 only serve to show that the practice of the office has not been 
 uniform, and that the true practice is still to be adopted and 
 followed. 
 
 I have no hesitation in saying, in view of the premises, 
 that a valid patent may be granted for a new genus or class 
 of ornaments, as well as for specific ornaments ; though I do 
 not doubt that, under the statute, every species, variety, and 
 individual, having distinct characteristics, under such a genus, 
 might also be patented, the patent being subordinate and trib- 
 utary to that which covered the class. 
 
 From the nature of this subject-matter there must always 
 be more latitude in the issue of patents for trifling changes of 
 form or outline, since it is only necessary that such changes 
 should constitute a new design to entitle them to a patent of 
 this class. 
 
 The second question relates to the element of utility in 
 patents for designs. 
 
 Upon this point it is said, by my predecessor, in Jason 
 Crane expa/rte, Commissioner's Decisions, May, 1869, p. 1, 
 ^' that the construction which has been given to the act of 
 1842 by the office, ever since its passage, is, that it relates to 
 designs for ornament merely ; something of an artistic char- 
 .acter, as contradistinguished to those of convenience or 
 utility." 
 
 The board of examiners-in-chief, in the present case, say : 
 The practice of the office has been uniform from the begin- 
 
"WM. N. BAETHOLOMEV. 71 
 
 ning, and has always excluded cases like the present from the 
 benefit of the laws relating to designs." And again : " The 
 general understanding has always been that the acts of 1842 
 and 1861 were intended to cover articles making pretensions 
 to artistic excellence exclusively." 
 
 In thus denying that a new " shape or configuration " of 
 an article, whereby utility or convenience is promoted, is the 
 proper subject of a patent under the acts referred to, the office 
 would seem to have involved itself in th€ absurdity that if a 
 design is useless, it may be patented, whereas if it be useful, 
 it is entitled to no protection. 
 
 fortunately, no such " uniform practice " has existed, and 
 the office is relieved from so grievous an imputation. The 
 practice seems to have been taken for granted by the appel- 
 late tribunals ; and so far from being as stated, is, as nearly 
 as possible, the reverse of it. 
 
 Articles have been, and are being constantly, patented as 
 designs which possess no element of the artistic or ornamental, 
 but are valuable solely because, by a new shape or configura- 
 tion, they possess more utility than the prior forms of like 
 articles. 
 
 Of this character are designs for axe-heads, for reflectors, 
 for lamp-shades, for the soles of boots and shoes, which have 
 been heretofore patented as designs ; and to this class might 
 be added, with great propriety, that class of so-called " me- 
 chanical" patents granted for mere changes of form, such as 
 plowshares, fan-blowers, propeller-blades, and others of like 
 character. 
 
 "When, therefore, my learned predecessor in Crane's case, 
 added to this number a box so designed as to hold, with con- 
 venience, a set of furs, he did but confirm, and not alter, the 
 practice of the office, so far as it can be gleaned from the pat- 
 ented cases. 
 
 I am of opinion that the class of cases named in the act as 
 arising from " new shape or configuration," includes within 
 it all those new changes of form which involve increase of 
 utility. 
 
 This I take to be the spirit of the decision in Wooster v. 
 
72 CASES DECIDED IN THE U. S. PATENT OFFICE. . 
 
 Crane, 2 Fisher, 683. The design was of a reel in the shape 
 of rhoinbns. The learned judge says : " In this case, the reel 
 itself, as an article of manufacture, is conceded to be old and 
 not the subject of a patent. The shape applied to it by the 
 complainant is also an old, well-known mathejnatical figure. 
 IS'ow, although it does not appear that any person ever be- 
 fore applied this particular shape to this particular article, I 
 cannot think that the act quoted above was intended to secure 
 to the complainant an exclusive right to use this well-known 
 figure in the manufacture of reels. The act, although it doe& 
 not require utility in order to secure the benefit of its pro- 
 visions, does require that the shape produced shall be the re- 
 sult of industry, effort, genius, or expense, and must also, I 
 think, be held to require that the shape or configuration 
 sought to be secured, shall at least be new and original as ap- 
 plied to articles of manufacture. But here the shape is a 
 common one in many articles of manufacture, and its applica- 
 tion to a reel cannot fairly be said to be the result of industry, 
 genius, effort and expense. 'No advantage whatever is pre- 
 tended to be derived from the adoption of the form selected 
 by the complainant, except the incidental one of using it as a 
 trade-mark. Its selection can hardly be said to be the result 
 of effort even ; it was simply an arbitrary, chance selection of 
 one of many well-known shapes, all equally well adapted to 
 the purpose. To hold that such an application of a common 
 form can be secured by letters patent, would be giving the act 
 of 1861, a construction broader than I am willing to give it," 
 
 It would seem from this language, that if there had been 
 " advantage," i. e., utility in the adoption of the form of the 
 rhombus, that it would have found more favor in the eyes of ' 
 the court. 
 
 This subject has been well discussed in the opinion of 
 Commissioner Foote, in Crane, ex parte. I concur in that 
 opinion ; except as to the recital of the former practice of the 
 oflfice, which a careful examination has shown to be er- 
 roneous. 
 
 The third question may be readily disposed of. Modes of 
 operation or construction, principles of action, combinations- 
 
■WM. N, BARTHOLOMEW. T3 
 
 to secure novelty or utility of movement, or compositions of 
 matter, can hardly be said to be " shapes, configurations, or 
 designs," but where the sole utility of the new device arises 
 from its new shape or configuration, I think it may fairly be 
 included among the subjects which the act of 1842 was de- 
 signed to protect. 
 
 The present case may, in view of the foregoing considera- 
 tions, be disposed of without difficulty. 
 
 Letters patent are asked, by applicant, for a new design, 
 for a rubber eraser, which consists in giving to the eraser a 
 cylindrical body, with ends bevBled to an edge. The claim is 
 for the " cylindrical rubber eraser provided with a wrapper 
 or case as herein shown and described." In the body of the 
 specification, the applicant describes the mode of making the 
 eraser, and he also enumerates its advantages over erasers of 
 the ordinary forms. The examiner does not object to the appli- 
 cation because of the utility of the eraser, although the board 
 of examiners-in-chief seem to base their decision upon that 
 point alone, but he pronounces the form already old in its ap- 
 plication to artists' stumps, and he insists that the mode of 
 composition or construction can form no element of the claim 
 for a design patent. 
 
 In the latter statement he is undoubtedly right. These 
 patents are granted solely for new shapes or forms, and the 
 form being new, it is immaterial by what process that form is 
 attained. The composition of matter or the mode of con- 
 struction is neither " design," " shape," nor " configuration," 
 and must be protected, if at all, under a patent of another 
 kind. 
 
 I cannot say that the presence of such matter in the spec- 
 ification would be objectionable, if descriptive merely, but it 
 could in no way be allowed to enter into or modify the 
 claim. 
 
 As to the first ground of rejection, I think the examiner 
 is in error. This purports to be a new form or shape of a 
 distinct article of manufacture, to wit : rubber erasers. If 
 it be new, as thus applied, it is immaterial whether pencils, 
 or stumps, or penhandles, or anything else, may or may not 
 
74 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 have been made cylindrical. If they are not substantially 
 the same articles of manufacture as erasers, the old form ap- 
 plied to this new article is unquestionably entitled to protec- 
 tion. 
 
 The applicant has not defined his invention with entire 
 accuracy. He should strike from his claim the words " pro- 
 vided with a wrapper or case," as these relate to construction 
 and not configuration ; and he should insert the words, " hav- 
 the ends beveled to an edge," in lieu of the phrase erased, or 
 he should adopt the usual form of claim for designs, viz. : 
 " The design for a rubber eraser as shown and described." 
 
 As the claim stands, it ought not to be allowed, and the 
 decision must be affirmed ; but the applicant will be allowed 
 to amend as suggested. 
 
ISRAEL C. MAYO. T5 
 
 ISEAEL C. MAYO, Ex parte. 
 
 Motion. February 23, 1870. 
 [Commissioner's Decisions, 1870, page 14.] 
 
 In the mutter of the application of Isbael C. Mayo for letters patent for 
 a Design for a Tbanspaebnt Shield. 
 
 An applicant for a design patent must make his election at the time of 
 making application, of the term — three and one-half, seven, or fourteen 
 years — for which he desires his patent to issue, and, at the same time, 
 pay the prescribed fee for the so elected term. 
 
 FisHEE, Commissioner. The applicant makes application 
 for a patent for a design. He pays $10 into the treasury, 
 and adds to his petition the following proviso : " Should the 
 commissioner be willing to allow a patent on this application, 
 the undersigned wishes to pay into the treasury the further 
 sum of $20, and have such patent granted for fourteen years, 
 instead of three and a half yfears." 
 
 Section 11 of the act of March 2, 1861, provides that 
 upon application for a patent for a design, "the commis- 
 sioner, on due proceedings had, may grant a patent therefor, 
 as in the case now of application for a patent, for the term of 
 three and one half years, or for the term of seven years, or for 
 the term of fourteen years, as the said applicant may elect in 
 his application; provided, that the fee to be paid in such 
 application shall be for the term of thr«e years and six 
 months, ten dollars ; for seven years, fifteen dollars ; and for 
 fourteen years, thirty dollars." 
 
 This language contemplates an election to be made by the 
 applicant, at the time of his application, of the term for which 
 he desires his patent to issue, and the payment of a fee cor- 
 responding to that election. It does not contemplate the 
 contingency of an application for one term and the payment 
 of one fee, and a subsequent election, at the time of issue of 
 
76 CASES DECIDED IS THE U. S. PATEFT OFFICE. 
 
 another term and the payment of another fee. The words 
 are " elect in his application." 
 
 The choice is to be made there, and not elsewhere or 
 otherwise, and being made, must be final. 
 
 I can see that the practice proposed might be desirable, 
 and might result in the granting of design patents for a 
 longer period, and the receipt of a larger revenue; but I 
 have no power to alter the plain language of the statute, or 
 to extend the time of election beyond the time of making the 
 application, for any purpose. 
 
 In the present case the applicant has paid a fee often dol- 
 lars. His patent, if granted, can issue only for three and a 
 half years. 
 
STUAET <fe BRIDGE. Y7 
 
 STUAET & BEIDGE, Ex parte. 
 
 Motion. February 23, 1870. 
 
 [Commissioner's Decisions, 1870, page 15.] 
 
 In the matter of the application of David Stuabt and Lewis Bridge for 
 letters patent for a Design fob a Cooking Stove. 
 
 " No provision is made for use or sale of the invention" — in the matter 
 of design patents — " prior to the application, as in the case of other 
 inventions." 
 
 " The design must not have been known or used by others prior to the 
 application of the inventor." 
 
 " If the design be described in a prior patent granted either to himself 
 or others, it is known to others within the meaning of the law." 
 
 " An invention of a design, if shown in a patent for a mechanical in- 
 vention, is lost, and cannot be included in a subsequent application 
 and patent for a design." 
 
 A patent, other than a design patent, cannot be reissued and changed, 
 either as a whole, or by a division into a patent for a design. 
 
 EisHEE, Commissioner. The applicants on November 3d, 
 1868, patented the arrangement of ovens and flue in a cook 
 stove having a peculiar external conformation. On February 
 6, 1870, they filed, an application for a design substantially 
 identical with that shown in their patent of 1868. 
 
 Upon this state of facts the examiner asks : 1. Should the 
 application be rejected on the patent ? 2. If so, can the 
 patentees reissue in two divisions, one of which shall be for 
 the design ? 3. If so, what fees are reqiiired ? 
 
 Section 11 of the act of March 2d, 1861, provides that the 
 new design, &c., shall not be " known or used by others be- 
 fore his, her, or their invention or production thereof, and 
 prior to the time of his, her, or their application for a patent 
 therefor, &c. 
 
 It will be observed that no provision is made for use or 
 sale of the invention prior to the application, as in the case of 
 
78 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 other inventions ; and the reason of the distinction is found 
 in the fact, that as designs relate to form and shape only, no 
 time is required for experiment before the application. At 
 all events, the language of the statute is plain. The design 
 must not have been known or used by others prior to the ap- 
 plication of the inventor. It is obvious that if the design be 
 described in a prior patent, granted either to himself or others, 
 it is knovsm to others within the meaning of the law. The 
 present application must therefore be rejected upon the for- 
 mer patent. 
 
 The second question is, whether the original patent can 
 be surrendered and reissued in two divisions, one of which 
 shall be for the design. 
 
 Patents for designs may be granted for three and one-half, 
 seven, and fourteen years, at the election of the applicant, 
 made at the time of application. Patents for other inven- 
 tions are granted for seventeen years. 
 
 The patent granted to applicants in November, 1868, was 
 of the latter kind, and was granted for seventeen years. 
 
 It is provided by section 13 of the act of 1836, that upon 
 applications for reissue, " it shall be lawful for the commis- 
 sioner, &c., to cause a new patent to be issued to the said in- 
 ventor for the same invention, for the residue of the period, 
 then unexpired, for which the original patent was granted." 
 
 This language is explicit, and it is obvious that under this 
 section any reissue of this patent, or any division of such re- 
 issue, must be granted " for the residue of the period then 
 unexpired for which the original patent was granted ;" that 
 is, for the residue of seventeen years. But no patent for a 
 design can be granted for seventeen years, or for the residue 
 of an unexpired period of seventeen years ; and this fact 
 seems decisive of the question. 
 
 The result is that an invention of a design, if shown in a 
 patent for a mechanical invention, is lost, and cannot be in- 
 cluded in a subsequent application and patent for a design. 
 
ISAAC A. 8HEPPARD. 79- 
 
 ISAAC A. SHEPPAED, ExparU. 
 
 Motion. March 8, 1870. 
 
 [Commissioner's Decisions, 1870, p. 32.] 
 
 In the matter of the application of Isaac A. Shbppaed for letters patent 
 for a Design foe a Stotb Ornament. 
 
 " There is no provision in, or fair construction of, the act relating to 
 letters patent for designs, which forbids the union of two or more 
 claims or clauses of claim in a single patent. 
 
 " There has heen no uniform practice to the contrary, by the Patent Office, 
 in the granting of design patents. 
 
 " If the design contains features which are new, singly and in com- 
 bination, no reason is known * * why they may not be so- 
 claimed." 
 
 FiBHEE, Commissioner. This case is referred to me by 
 the primary examiner upon the following statement : 
 
 "In this application for patent for design of Isaac A. 
 Sheppard, filed February 24, 1870, are found two claims, one 
 for the central figure (which constitutes the gist of the case), 
 when cast on and formi-ng a part of a stove plate ; and the 
 other for the central figure and surrounding ornaments. 
 
 " In dealing with this case, the examiner finds that it has 
 not been the usual practice of the office to allow more than 
 one claim in an application for a patent for a design. The 
 reasons generally given to sustain this course of action are, 
 that a design is a complete and individual device or orna- 
 ment, and, as such, must be exact and perfect in every form, 
 line, or configuration, the slightest deviation from what is 
 represented operating to make a new design. 
 
 " The law evidently makes no sucli inflexible rule of 
 official practice. In the Bartholomew case (Commissioner's 
 Decision, 1869, p. Ill), it is observed that a certain reason- 
 able and proper latitude is given in judging what does and 
 what does not breathe the spirit of the invention in any given 
 
80 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 case, and that mere colorable variation is to receive no more 
 countenance or favor in an application for a patent for a 
 design, than it would in an application for a mechanical 
 device. 
 
 " But while the examiner is impressed with these views, 
 he is unwilling in his first decisions, in applications of the 
 present character, to overrule, so far as falls within his juris- 
 diction, the generally settled custom and rule of the office in 
 the above particular. He desires, therefore, to refer the whole 
 matter to the personal consideration of the commissioner, as 
 a question of office practice for his decision or direction. 
 
 " L. Deane, Examiner." 
 
 I agree with the examiner that there is no provision in, or 
 fair construction of, the act relating to letters patent for de- 
 signs, which forbids the union of two or more claims or 
 clauses of claim in a single patent. I am at a loss to know 
 upon what ground such a construction can be asserted or 
 maintained. If the design contains features which are new, 
 singly and in combination, no reason is known to me why 
 they may not be so claimed. 
 
 But the practice of the office has not been so uniformly 
 adverse to the granting of double claims as seems to have 
 been supposed. On the contrary, letters patent for designs 
 containing more than one claim were granted in the years 
 1855, 1857, 1858, 1859, 1860, and 1862, and doubtless in the 
 succeeding years, if time had permitted a further examination. 
 Among these special reference is made to the patent granted 
 to AppoUos Eichmond, in 1859, which contains one claim for 
 the configuration of a stove plate, and another for the orna- 
 ment upon the same plate ; and to the patent granted to Isaac 
 B. "Woodruff, in 1862, for a design for a clock case, which 
 contains one claim for the configuration of the whole case, 
 and another for a gilt frame, forming a subordinate part of 
 the same whole. 
 
 These cases fully justify the claims presented in the present 
 application, which may, therefore, be allowed, both upon reason 
 and precedent. 
 
GEORGE H. SELLERS. 81 
 
 GEOEGE H. SELLEES. 
 
 Motion. June 8, 1870. 
 
 [Commissioner's Deqisions, 1870, page 58.] 
 
 In the matter of the application of George H. Sellbes for letters patent 
 for Impkotembnt in Rolled Hollow Hexagonal Columns. 
 
 " It is not a matter of discretion with tte commissioner whether the sub- 
 ject of an application be a machine or a design for a manufacture." 
 " It is a matter of law in which a mistake is fatal. These subjects of 
 invention or contrivance are, in truth, as distinct from each other as 
 either is from copyright." 
 
 There is " no discretion or authority vested in the commissioner to turn 
 this application " — an application for a mechanical patent — "into an 
 application for a design, nor any process by which it can be accom- 
 
 . plished short of a new application." 
 
 " A new shape or configuration is independent of materials or modes of 
 manufacture. If the shape be old as applied to the thing, it cannot 
 avail that the thing is produced by a new process or wrought in a 
 different material, If cast, hexagonal columns are old, no patent can 
 be granted for wrought columns of an hexagonal shape." 
 
 FiSHEE, Commissioner. Applicant filed, in September, 
 1868, an application for a patent for "a new and useful im- 
 provement in a rolled hollow hexagonal column." He 
 claimed, in terms, " a hollow column of uniform thickness, 
 hexagonal in both its interior and exterior, and rolled out 
 from a solid or welded pile or billet of iron or steel, with a 
 hexagonal opening through it, substantially as described and 
 represented." 
 
 Becoming satisfied that he could not succeed in obtaining 
 a patent for his supposed invention in this shape, he now pro- 
 poses to change his application into one for a patent for a de- 
 sign. He asks to be allowed to deposit a further fee of $15,. 
 making $30 in all. He avers that it was by inadvertence and 
 6 
 
82 OASES DECIDED IN THE V. S. , PATENT OFFICE. 
 
 mistake that the fee of $30 was not paid originally, and the 
 application made in terms for a patent for a design, under 
 section 11 of the act of March 2, 1861. He presents an 
 amended specification, in which the invention is described as 
 a "new and original shape or configuration of steel or 
 wrought-iron rolled pipes, tubes, or hollow shafts or pillars ;" 
 and is claimed in the following terms : " as a new and original 
 shape or configuration of tubes, pipes, hollow shafts, or hollow 
 pillars or posts of steel, or of wrought or malleable iron, a 
 machine-rolled tube or pipe, or hollow shaft or hollow post, of 
 uniform and symmetrical hexagonal perimeter, area, and cross 
 section, in every part of its length, and having no projections 
 upon its surface or beyond its angles." 
 
 In support of his prayer, he urges that the question 
 whether his patent be for an invention or a design, is merely 
 one of classification, which is within the discretion of the 
 commissioner, and he insists that this is a ease in which that 
 discretion ought to be exercised in his favor. 
 
 Prior to the act of August 29, 1842, there was no law 
 which permitted the granting of letters patent for " shapes," 
 " configurations," " designs," " ornaments," " patterns," and 
 the like, which did not involve some mechanical principle, or 
 amount to a new machine or manufacture within the meaning 
 of the patent law. 
 
 By that act and the act of March 2, 1861, these subjects 
 were made patentable, not by enlarging the scope of the 
 existing patent laws by the addition of new subjects of inven- , 
 tion, but by independent legislation, providing for a new class 
 of patents, granted to a difi'erent class of persons, for a different 
 class of subjects, for different periods of time, and upon the 
 payment of different fees. 
 
 It is not a matter of discretion with the commissioner 
 whether the subject of an application be a machine, or a de- 
 sign for a manufacture ; a manufacture, or a new and original 
 shape or configuration of an article of manufacture ; a com- 
 position of matter, or a composition in alto or hasso relievo ; 
 an art, or a pattern, print, or picture. It is a matter of law 
 in which a mistake is fatal. These subjects of invention or 
 
GEORGE H. SELLERS. 83 
 
 contrivance are in truth as distinct from each other as either 
 is from a copyright. 
 
 The applicant treats this matter as if it were simply a 
 matter of mistake as to the term for which he should have 
 applied for letters patent; but in truth the error, if error 
 there were, was in the character of the application itself. 
 He applied for a patent for a new product, paying the fee 
 for an examination, and praying for a patent for seventeen 
 years. 
 
 He described not a design for & manufacture, but a manu- 
 facture. He claimed not a new shape, but a new thing. I 
 know of no discretion or authority vested in the commissioner 
 to turn this application into an application for a design, nor 
 any process by which it can be accomplished short of a new 
 application. A single illustration will make this sufficiently 
 obvious. An alien may apply for letters patent for an inven- 
 tion, but not for a design, unless he has resided in this coun- 
 try for more than one year, and made oath of his intention to 
 become a citizen. It would be impossible, therefore, to turn 
 the application of an alien for an invention into an application 
 for a design, however clearly the subject-matter might place it 
 in the latter class of subjects. 
 
 I regard the eleventh section of the act of 1861 as distinct 
 from the remainder of the law, as if it formed the subject of 
 a separate statute ; and the codifiers of the patent laws evi- 
 dently so regard it, for they collected all the matter relating 
 to design patents in a separate chapter. 
 
 There is another objection which is fatal to this applica- 
 tion. A new shape or configuration is independent of mate- 
 rials or modes of manufacture. If the shape be old as applied 
 to the thing, it cannot avail that the thing is produced by a 
 new process, or wrought in a different material. If cast hex- 
 agonal columns are old, no patent can be granted for wrought 
 columns of a hexagonal shape. It is immaterial so far as the 
 design is concerned, whether the column be cast, hammered, 
 or rolled, or whether it be of cast iron, malleable iron or steel. 
 (See "W". N". Bartholomew, exparte, Commissioner's Decisions,, 
 1869, p. 103). 
 
84 CASES DECIDED IN THE TJ. S. PATENT OFFICE. 
 
 The applicant now claims hollow shafts, &c., " of wrought 
 or malleable iron," " machine-rolled tube or pipe," of a hex- 
 agonal form, &c. This is evidently intended to avoid the 
 references already given, or those which may be given, to cast 
 iron hexagonal pipes or columns ; or to those which form a 
 hexagon when united, although not rolled in a single piece. 
 These incidents have nothing to do with the design, the claim 
 for which stands only upon novelty of form, and cannot be 
 strengthened by their introduction. 
 
 The motion of applicant is overruled. 
 
■WILLIAM KING, ;85 
 
 WILLIAM JUNG. 
 
 Motion. September 19, 1870. 
 [Commissioner's Decisions, 1870, p. 109.] 
 
 In the matter of the application of William Kraa for letters patent for a 
 Design foe a Trade Make. 
 
 The provisions of section 77 of the act of July 8, 1870, " by prescribing 
 the statutory mode of obtaining protection for a trade mark, excludes 
 all other modes not expressly provided for, and operates as a construc- 
 tion of section 71, in excluding trade marks from the list of subjects 
 intended to be protected as designs." 
 
 FisHEE, Commissioner. Applicant tenders $30 and asks 
 ibr a patent for fourteen years for a " design for a trade 
 mark." He says : " The distinctive features of my design 
 -consist of my portrait placed in the center, lengthwise, and 
 surmounted by the British coat-of-arms, about which is ar- 
 ranged in a semicircular form the words, ' King's Sauce EoyaL' 
 Upon the left of my portrait is a shield or tablet containing 
 the words, ' Shake well the bottle before using;' and upon the 
 opposite side a similar table containing the words, ' None 
 genuine without my portrait and signature, W. King,' said 
 signature being a fac simile of my handwriting. Although 
 the above-named tablets are used, they are not considered as 
 essential to the design, and may be omitted if desired. 
 
 " Having thus fuUy set forth the nature and merits of my 
 invention, what I claim as new is : The hereinbefore described 
 design, substantially as shown." 
 
 Prior to the act of July 8, 1870, no protection was afforded 
 by statute for trade marks eo nomine. They were left to the 
 protection of the common law, except where the design was 
 of such a character as to fall properly within the subjects 
 patentable as designs. In such case they have been patented 
 
86 C^SES DECIDED IN THE XJ. S. PATENT OFFICE. 
 
 usually with the addition of the words, " for a trade mark." 
 These words were, however, merely descriptive, and carried 
 with them no guarantee as to the use of the trade mark. In 
 other words, if goods had been sold with such a design affixed, 
 the only penalty that could have been recovered, under the 
 statute, would have been for the infringement of the design, 
 as an ornament ; and no recovery could have been had of the 
 damage resulting to the injury to the trade of the manufac- 
 turer, by a violation of his trade mark in the sale of the arti- 
 cles to which it was attached. 
 
 It was to remedy this evil, and to give promptly, by stat- 
 ute, that prptection to trade marks which the common law 
 tardily afforded, that Congress passed so much of the act of 
 July 8, 1870, as relates to this subject. By the provisions of 
 that act, a trade mark, whether old or new, may be registered 
 in the Patent Office by its owner, and by the payment of $25 
 protection is afforded for thirty years. As this protection is 
 more ample, and covers more than double the time for less 
 money, it is difficult to see why applicant, or any one else, 
 should now seek a design patent for a trade mark. The folly 
 of the application does not, however, relieve me from the 
 necessity of deciding upon its legality. 
 
 The only clause of the designs act under which trade 
 marks can possibly fall is that which enumerates '^ any new 
 and original impression, ornament, pattern, print, or picture, 
 to be printed, painted, cast, or otherwise placed on or worked 
 into any article of manufacture." This manifestly refers to 
 the external ornamentation of manufactured articles ; and it 
 requires, first, a specific article of manufacture to be orna- 
 mented ; and, second, an impression, ornament, pattern, print, 
 or picture to be placed upon it. It was only by a forced con- 
 struction of this clause that designs, which were to be used 
 only as trade marks, or selling labels, could be included with- 
 in it. 
 
 But the subject is relieved of all difficulty by section 77 of 
 the late statute. It is there enacted that any person, corpora- 
 tion, &c., " who arc entitled to the exclusive use of any lawful 
 trade mark, or who intend to adopt and use any trade mark, 
 
WILLIAM KING. 87 
 
 for exclusive use within the United States, may obtain jyro- 
 tection for such lawful trade mark by complying with the 
 following provisions." This provision, by prescribing the 
 statutory mode of obtaining protection for a trade mark, ex- 
 cludes all other modes not expressly provided for, and operates 
 as a construction of section Tl in excluding trade marks from 
 the list of subjects intended to be protected as designs. 
 
 In accordance with this opinion, the present application, 
 and all others which are intended to cover trade marks, or 
 " designs for trade marks," must be presented under the pro- 
 visions of sections 77-84 of the act of July 8, 1870, and not. 
 otherwise. 
 
88 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 EGBERT W. SPEEEY. 
 
 Extension. October 28, 1870. 
 
 [Commissioner's Decisions, 1870, page 139.] 
 
 In the matter of the application of Egbert W. Spbrbt for the extension 
 of letters patent Wos. 2,641 and 2,64:2, for Designs fob a Knite, Pobk, 
 OB Spoon Handle, granted April 30, 1867. 
 
 Since the passage of tlie act of July 8, 1870, the commissioner has no 
 power to extend patents for designs issued since March 3, 1861. 
 
 The fact that the application for the extension of such a patent was filed 
 before the passage of the act of July 8, 1870, does not preserve the 
 right to such extension. 
 
 Duncan, Acting Commissioner. The patents which, it is 
 now sought to extend are for designs, and were granted April 
 30, 1867, for the term of three and one-half years. The peti- 
 tions for the extensions were filed respectively June 3 and 
 May 31, 1870. 
 
 The remonstrants object to the grant of the extensions on 
 the ground, inter alia, that under the existing law, the com- 
 missioner has no power to entertain the applications. 
 
 The commissioner's sole authority for extending patents is 
 derived from positive legislative enactment, and in the exer- 
 cise of this power he is bound to restrict his action to the 
 exact limits established by the statute. * 
 
 The only parts of the new law relating in terms to this 
 subject are the sections (63 to 67 inclusive) which provide for 
 the extension of patents for inventions as discoveries, and 
 section 74, which enacts that " patentees of designs issued 
 prior to March 2, 1861, shall be entitled to extension of their 
 respective patents for the term of seven years, in the same 
 manner and under the same restrictions as are provided for 
 the extension of patents for inventions or discoveries issued 
 prior to the 2d day of March, 1861." 
 
EGBERT W. SPERRY. 89 
 
 The patents now offered for . extension, being patents for 
 designs issued since the 2d day of March, 1861, do not come 
 under either of these provisions, and consequently the com- 
 missioner has no power in the premises, unless by reason of 
 the fact that the applications were filed prior to the passage 
 of the present law, applicant thereby acquired rights which 
 are preserved to him by the repealing section of the law. 
 
 The patent act of 1861 (section 11) gave the commissioner 
 power to extend design patents. . The repealing section of the 
 act of July 8, 1870, contains the proviso that the repeal of the 
 existing laws relating to patents " shall not affect, impair, or 
 take away any right existing under any of said laws." The 
 rights here referred to would seem to be such rights only as 
 may form the basis of a suit at law or in equity, the further 
 language of the proviso being as follows, " but all actions and 
 causes of action, both in law and in equity, which have arisen 
 under any of said laws, may be commenced and prosecuted, 
 and if already commenced, may be prosecuted to final judg- 
 ment and execution, in the same manner as though this act 
 had not been passed." Manifestly the rights here contem- 
 plated can have no relation to the right of an applicant for an 
 extension to have his case examined and acted upon by the 
 Commissioner of Patents. 
 
 This right, as existing in cases pending at the time of the 
 passage of the new law, does not appear to have been pre- 
 served by the proviso quoted. 
 
 !N^either has applicant any rights preserved to him by the 
 second proviso of the repealing section of the new law, which 
 is in these words, viz. : " That all applications for patents 
 pending at the time of the passage of this act, in cases where 
 the duty has been paid, shall be proceeded with and acted on 
 in the same manner as though filed after the passage thereof." 
 While this proviso may fairly be construed to cover applica- 
 tions for extensions, as well as for original patents and for re- 
 issues, yet manifestly it cannot include any class of cases over 
 which, if filed subsequently to the passage of the act, the 
 commissioner could not assume jurisdiction. The present 
 
90 CASES DECIDED IN THE U. S. PATENT OEFICJI. 
 
 cases fall within the last category, and cannot, therefore, be 
 subject to the operation of the provisp. 
 
 There would seem, therefore, to be no power vested in the 
 commissioner to grant the extension asked for, even if appli- 
 cant had furnished satisfactory evidence upon the various 
 questions involved in every extension, and in which the burden 
 of proof is thrown upon the party making the application. In 
 point of fact, no ascertained value of the inventions is shown, 
 and applicant has utterly failed to show that the lack of re- 
 muneration has been without neglect or fault on his part. 
 
 The extension must be refused. 
 
E. RAY FENNO. 91 
 
 E. KAY FENNO. 
 
 Appeal from Primary Examiner. February 37, 1871. 
 [Commissioner's Desisions, 1871, page 53.] 
 
 In the matter of the application of E. Ray Fenho for letters patent for a 
 Design toe Dampbb for Stove Pipes. 
 
 Mechanical construction is not claimalDle in a design patent. 
 
 In the statute relating to design patents, there is " no limitation as to 
 the use to which the article, wrought into the particular shape designed 
 for it, is to be subjected ; and no suggestion that mere beauty of form 
 or ornamental configuration are the ends sought." 
 
 " The language." — of the statute — " expressly implies that utility may 
 be the sole object had in view, in the invention or selection of the par- 
 ticular form to be impressed upon the manufacture." 
 
 " The present law "—the act of July 8, 1870—" is different from that 
 which it supersedes. Formerly it was only required that the design be 
 new and original ; now it must be new, useful, and original." 
 
 Applicant sought a design patent for a stove-pipe damper, which was 
 like a prior damper, except in the shape of a certain orifice. Held, that 
 if applicant could show superior utility in his • form of orifice, that 
 would entitle him to a patent. 
 
 DrarcAjsr, Acting Commissioner. Applicant's damper con- 
 sists of two plates, the one being a slide which works over an 
 orifice in the other, opening and closing it at pleasure, the 
 main plate at the same time being made capable of partial 
 rotation on an axis. The opening in the principal plate is 
 bounded on the one side by the arc of a circle, and on the 
 other by an irregular curve. The patent granted to E. Mun- 
 son, February 16, 1864, shows a damper having precisely the 
 same mechanical construction, the only difference being in 
 the shape of the opening, which in Munson's damper is rect- 
 angular. 
 
 Fenno, the present applicant, came before the office in 
 
S2 CASES DECIDED Df THE U. S. PATENT OFFICE. 
 
 1867, asking for a patent for his adjustable damper regarded 
 as a mechanical device. He was rejected upon the patent of 
 Munson. He carried his application through the various ap- 
 peals allowed by law, and the correctness of the examiner's 
 decision was finally aflfirmed by the highest appellate tribunal. 
 Mr. Justice Fisher, in rendering his decision upon the appeal, 
 uses the following language : " In this case there is not the 
 least appreciable diflference between the damper of applicant 
 and that of Munson, to which reference was made in the office. 
 They are identical in principle so completely, that the wonder 
 is that the case should have been carried beyond the first re- 
 jection of the primary examiner." 
 
 Fenno now comes forward with this new application, in 
 which he asks for a patent • on his " alleged new and original 
 design " for a stove-pipe damper. 
 
 The examiner declines to pass upon the question of novelty, 
 raising the preliminary objections, (1) that " mere shape is 
 but a fractional part of the end desired to be covered by the 
 case ; " and (2) that the claim for a patent is inadmissible, 
 inasmuch as the device is to perform its function inside a stove 
 pipe, where, from the nature of things, mere beauty of form or 
 ornamental configuration can play no part. 
 
 The first objection raises a question as to the good faith of 
 the party in making his application in the present form. A 
 ■careful reading of the specification shows that the objection 
 is not entirely without foundation. The nature of the inven- 
 tion is set forth in the opening of the specification in the fol- 
 lowing language ; " The invention consists in making the 
 damper in two parts, one part being stationary, and the other 
 part being made to slide thereon, as hereinafter more fully de- 
 scribed ; " and then follows an elaborate description of the 
 mechanical construction, and the mechanical functions of the 
 various parts of the damper. Following this description, the 
 claim for " the design for damper as shown " is, to say the 
 least, ambiguous ; and the inference would seem justified, that 
 applicant is now endeavoring to obtain, covertly, what he 
 failed to accomplish by direct method upon the former appli- 
 cation. 
 
E. RAY FENNO. 93 
 
 As the specification is now drawn, the examiner's first ob- 
 jection must be regarded as well taken. 
 
 But it is manifest that the specification is susceptible of 
 amendment, so as that the mechanical construction of the 
 damper shall be distinctly disclaimed, and the claim be con- 
 fined to the special form of the opening in the main plate ; 
 and the question then recurs whether, if so amended, the 
 claim would be of a patentable character, and the novelty of 
 its subject-matter should be inquired into by the examiner. 
 
 Among the various things which may form the subject of 
 design patents under the amended law is, " any new, useful, 
 and original shape or configuration of any article of manu- 
 facture," which has not been known or used by others, or 
 patented or described in any printed publication, prior to the 
 invention or production thereof by the applicant. 
 
 There is here no limitation as to the use to which the 
 article, wrought into the particular shape designed for it, is 
 to be subjected ; and no suggestion that mere beauty of form 
 or ornamental configuration are the ends sought. In fact, the 
 language quoted expressly implies that utility may be the 
 sole object had in view, in the invention or selection of the 
 particular form to be impressed upon the manufacture ; and 
 I am of the opinion that under the present statute, if a new, 
 and at the same time useful, shape be devised for a particular 
 article of manufacture, even though no ornamental efiect be 
 produced thereby, the inventor of the same is entitled to 
 protection for it under the design section of the patent law. 
 
 It should, however, be borne in mind by the examiner, in 
 the further consideration of the present case, that, as regards 
 designs for articles of manufacture, the present law is difier- 
 ent from that which it supersedes. Formerly it was only re- 
 quired that the design be new and original ; now it must be 
 new, useful, and original. If, therefore, Fenno should so 
 amend his specification as to relieve it 'of the first objection 
 urged, it would still be incumbent upon him to show that 
 some useful result is produced by changing the form of the 
 opening, as shown in Munson's patent, to that shown in the 
 pending application. As the specification now stands, no 
 
94 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 utility of the one form over the other is alleged ; and it is 
 propounded as a fair subject for examination, whether any in 
 fact exists. 
 
 The case is remanded to the examiner for the considera- 
 tion of such amendments as the applicant may desire to pre- 
 sent, and of such arguments on the question of utility as the 
 nature of the case will admit of. 
 
WALTER L. TYLER. 95 
 
 WALTEE L. TYLER. 
 
 Appeal from Examiners-in-Chief. April 37, 1-871. 
 [Commissioner's Decisions, 1871, page 106.] 
 
 In the matter of the application o/" Walter L. TYiER/or letters patent for 
 a Design fob a Clock-case. 
 
 " The material used, or mode of construction employed, cannot in any 
 ■way affect the question of novelty or patentability " in relation to de- 
 sign patents. 
 
 A design for a circular clock-case, having flaring or sloping sides, com- 
 posed of rounded rings, or laminae, of dififerent colored woods, so that 
 the various stripes of color are seen from whatever direction the case is 
 viewed, is not anticipated by a cu'cular clock-case, of common form, 
 "which, if viewed from the front, shows two stripes of wood and two of 
 brass, but, if viewed from the sides, only one of brass and one of wood. 
 
 Nor by an oval picture frame of alternate rings of different colored woods, 
 the outer rings having the greater projection, showing, when viewed in 
 front, alternate stripes of different colors, but, if viewed from the side, 
 only a single wood of a single color. 
 
 Leggett, Commissioner. The applicant describes his de- 
 sign, which he claims as new and original, as follows, viz : 
 
 " The case is of a circular form, and is provided with the 
 usual round metallic sash A. B, C are the several laminae of 
 dark and light-colored wood. The sides of the case are flaring, 
 so that the several laminae may be seen when the case is 
 viewed directly from the front. The edges of each of the 
 laminae are slightly rounded, thus corrugating the flaring 
 sides, as shown in the drawing (fig. 2). The whole formed 
 and combined, as shown and described, to produce a new de- 
 sign for a clock-case. 
 
 "I claim as my invention the design for a clock-case sub- 
 stantially as shown and described." 
 
 The examiner rejected this application by reference to 
 Jerome's patent of June 16, 1863, and the rejected application 
 of Green, filed October 19, 1867. 
 
 The board of examiners-in-chief afiirm the decision of the 
 examiner, and add that, " the applicant evidently relies upon 
 
96 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 the difference in construction to substantiate his claim to a pat- 
 ent. This ground is believed to be utterly untenable. Shape, 
 configuration, ornamental design, may be protected by a design 
 patent, but the material used, or mode of construction employed, 
 cannot in any way affect the question of novelty or patenta- 
 bility." 
 
 The doctrine in reference to design patents, as set forth by 
 the board, is undoubtedly correct, but whether it applies against 
 the applicant depends entirely upon whether " he relies upon 
 difference in construction to substantiate his claim to a patent." 
 
 I confess that I cannot see in the applicant's specification 
 and claim, as quoted above, any evidence of reliance upon 
 " difference in construction." It is true, he briefly describes 
 the process of construction, but only to the end that the shape, 
 the ornamental effect or design, may be more apparent. His 
 mode of construction secures an appearance, a presentation to 
 the eye, substantially different from that of either of the refer- 
 ences. Jerome's patent shows a circular clock-case, which, if 
 viewed from the front, shows two stripes of wood and two 
 of brass ; but, if viewed from the sides, only one of brass and 
 one of wood, and has the appearance of the ordinary clock- 
 case, having a wood body and brass sash, and is not orna- 
 mented by alternate stripes at all. 
 
 Green's rejected application was for an oval picture frame, 
 constructed of alternate rings of different colored woods, the 
 outer rings having the greater projection. This would also 
 show alternate stripes of different colors when viewed directly 
 in front, but, if viewed from the side or edge, only a single 
 wood of a single color is presented to the eye. 
 
 The application shows a design of a clock-case which pre- 
 sents to the eye several alternate stripes of different colors, 
 and so arranged as to exhibit these stripes from whatever 
 direction the case may be viewed. 
 
 The three cases exhibit a slight resemblance in ornamenta- 
 tion when viewed from directly in front, but the design 
 described by applicant is radically different from either of the 
 others when viewed from any other direction. 
 
 The decision of the board of examiners-in-chief is therefore 
 reversed. 
 
PHILIP -WEINBERG. '97 
 
 PHILIP WEINBEEG. 
 
 Appeal from Primary Examiner. September 6, 1871. 
 
 [Commissioner's Decisions, 1871, page 344.J 
 
 In the Matter of the application of Philip ■WEmBEEG for Desion 
 Patent on Muffs. 
 
 ■" The law never was intended to give a man a design patent to serve 
 merely the purpose of a trade mark." 
 
 " A prerequisite for a patent of any kind is an exercise of inventive 
 genius. This is no less true of design than of functional patents." 
 
 " The word . ' produced,' as used in the statute referring to design 
 patents, was not intended to permit the grant of design patents, ' with- 
 out evidence of the exercise of inventive genius, * * * t^q^ -^^g j^ 
 intended in any way to let down the standard for grant of patents.' " 
 
 " 'Invented or produced,' as used in this section of the law, means the 
 exercise of a higher faculty than would have been indicated by ' in- 
 vented' alone." 
 
 '' In mechanism an exercise of constructive genius may, perhaps, be 
 sufficient to obtain a patent, but a design patent presupposes an ex- 
 ercise of creative genius. Original thought is demanded, a new idea 
 must be begotten and embodied." 
 
 ^' A mere substitution of one color for another possesses no element of 
 originality, and indicates no exercise of genius, and cannot, therefore, 
 become the subject of a patent ; neither can any blending or arrange- 
 ment of colors, unless a new_ esthetical effect is produced — an original 
 idea indicated." 
 
 Lbggett, Commissioner. This case comes from tlie pri- 
 mary examiner on the following question : 
 
 Can color, parti-colors (indefinable), their indefinite shades 
 and contrasts or measurements, form the proper subject for 
 a design patent, and how far, if at all ?" 
 
 It is clear that the law never was intended to give a man 
 a design patent to serve merely the purpose of a trade-mark. 
 
 A prerequisite for a patent of any kind is an exercise of 
 inventive genius. This is no less true of design than of 
 functional patents. It is true the section of the law relating 
 1 
 
&8 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 to design patents says, " tliat if any person, by his own in- 
 dustry, genius, efforts, and expense, has invented or produced 
 any new and original design," &c. ; and many seem to sup- 
 pose that by the introduction of the word " produced," it was 
 intended to grant design patents without eyidence of the 
 exercise of inventive genius, and hence patents are continually 
 sought, and sometimes granted, for the most trivial changes 
 in form or color. The word " produced" was never intended 
 to give any such latitude, nor was it intended in any way to 
 let down the standard for grant of patents. The word " in- 
 vent " had become so intimately associated with improve- 
 ments in functional construction and combinations, that the 
 word " produced " was used in connection with the. word 
 " invention," merely to relieve it of this functional significa- 
 tion. When read in connection with the words "genius" 
 and " original," as found in the statute quoted, the word 
 " produced " is evidently used with a much higher significa- 
 tion than merely made or constructed ; it means created. 
 " Invented or produced," as used in this section of the law, 
 means the exercise of a higher faculty than would have been 
 indicated by " invented " alone. 
 
 In mechanism an exercise of constructive genius may, 
 perhaps, be sufiicient to obtain a patent, but a design patent 
 presupposes an exercise of creative genius. Original thought 
 is demanded, a new idea must be begotten and embodied. 
 
 A mere substitution of one color for another possesses no 
 element of originality, and indicates no exercise of genius, 
 and cannot, therefore, become the subject of a patent ; neither 
 can any blending or arrangement of colors, unless a new 
 esthetical effect is produced — an original idea indicated. 
 
 I am not prepared to say that no design patent could be 
 based on colors, but, with the foregoing explanation, my 
 views are, I think, sufficiently indicated for the case under 
 consideration and other similar cases. 
 
PETER C. PAEKINSON. 99 
 
 PETEE 0. PAEXmSOlN'. 
 
 Appeal from Primary Examiner. September 35th, 1871. 
 
 [Commissioner's Decisions, 1871, page 351.] 
 
 In the matter of the application of Peteb C. Paekenson for a design 
 patent for a Claw Hammer. 
 
 " The law authorizing design patents, was intended to provide for an 
 entirely different class of inventions" from those properly coYered by 
 machine or fmictional patents — " inventions in the field of assthetics, 
 taste, beauty, ornament." 
 
 " The term ' useful,' in relation to designs, means adaptation to pro- 
 ducing pleasant emotions." 
 
 " By ' article of manufacture,' as used in this section," of the design 
 patent law, " the Legislature evidently meant only ornamental articles, 
 articles used simply for decoration.'' 
 
 " Creative genius is demanded in giving existence to a new and original 
 design." 
 
 ^' The man who comes to the office with a machine or article of manu- 
 facture, and seeks a design patent simply for some slight and unim- 
 portant change of form or color, requiring neither inventive nor 
 creative genius, and producing no new or aesthetic effect, deserves but 
 little favor or consideration." 
 
 The case of Bartholomew (Com'r Dec. 1869, page 103), commented on 
 and dissented from. 
 
 Leggett, Commissioner. The applicant seeks to obtain a 
 design patent upon what he calls a " claw hammer." This 
 hammer is nothing more or less than an iron bar fitted in 
 substantially the ordinary manner and form for drawing 
 spikes. The foot of this hammer or spike bar has the ordi- 
 nary slot for catching the head of the spike, and the foot is of 
 a goose-neck shape, and of sufficient length to draw the spike 
 entirely from its fastening. The same is substantially true of 
 a large majority of the tack hammers and nail hammers in 
 common use. The applicant's device may differ somewhat in 
 form from ordinary claw hammers, but not essentially or ma- 
 teriallv. 
 
100 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 The examiner refuses to consider the application under 
 the head of designs, and says, " Function can form no part of 
 a design patent." From this decision the applicant appeals 
 under Kule 44. 
 
 The law has provided for granting patents to the invent- 
 ors or discoverers of new and useful arts, machines, manufac- 
 tures, and compositions of matter, and also of any improve- 
 ments thereof 
 
 This class of inventions has to do with functional qualities 
 of matter and things. The term " useful," in connection with 
 machine patents, relates to the office the thing patented fills 
 in producing a desired offect ; or, if the thing patented is the 
 result or effect — that is, the article produced, — then " useful" 
 relates to its adaptation to serve some practical purpose in 
 supplying some physical or tangible want. 
 
 But the law authorizing design patents was intended to 
 provide for an entirely different class of inventions — inven- 
 tions in the field of aesthetics, taste, beauty, ornament. 
 
 The question an examiner asks himself, while investigating 
 a device for a design patent, is not, " What will it do ? " but, 
 " How does it look ? " " "What new effect does it produce 
 upon the eye ? " The term " useful," in relation to designs, 
 means adaptation in producing pleasant emotions. 
 
 The section of the law which enumerates the subjects of 
 design patents reads as follows : 
 
 " Any person who, by his own industry, genius, efforts, and 
 expense, has invented or produced any new and original design 
 for a manufacture, bust, statue, alto-relievo, or bas-relief ; any 
 new and original design for the printing of woolen, silk, cot- 
 ton, or other fabrics ; any new and original impression, orna- 
 ment, pattern, print, or picture, to be printed, painted, cast, or 
 otherwise placed on or worked into any article of manufac- 
 ture ; or any new, useful, and original shape or configuration 
 of any article of manufacture, &c." 
 
 The Legislature never intended, by this section, to let 
 down the standard for patents. It was never contemplated to 
 grant a design patent for every possible change of form that 
 might be given to a machine or article of manufacture. By 
 
PETER 0. PARKINSON. 101 
 
 " article of manufacture," as used in this section, the Legisla- 
 ture evidently meant only ornamental articles — articles used 
 simply for decoration. 
 
 The inventor in this line must not merely change the form 
 or the color, but he must produce a new aesthetic effect. He 
 must, by the exercise of industry and genius, invent or pro- 
 duce, not only a new, but an original design. He must do a 
 little more than invent — ^he must produce ; that is, create. 
 Creative genius is demanded in giving existence to a new and 
 original design. 
 
 The idea of stretching the section in question to cover 
 slight changes in the form of crow-bars, spades, plows, scrapers, 
 &c., is simply ridiculous, and tends to bring the whole patent 
 system into disrepute. 
 
 If a man wants a trade-mark, let him adopt one and have 
 it registered; but before he can have the monopoly of a 
 patent, he must have produced something substantially new. 
 
 The practice of the oiBce in granting design patents has 
 been not only liberal, but lax. To real inventors the office 
 should be liberal and generous, and all doubts should be 
 solved in their favor. But the man who comes to the office 
 with a machine or article of manufacture, and seeks a design 
 patent simply for some slight and unimportant change of form 
 or color, requiring neither inventive nor creative genius, and 
 producing no new or aesthetic effect, deserves but little favor 
 or consideration. In general, such men are impostors, and 
 desire a design patent merely to obtain the right to put the 
 word " patented " upon their manufacture, and thereby de- 
 ceive the public and wrong real inventors, for they well know 
 that not one person in ten thousand will ever learn the fact 
 that the patent only covers the design. 
 
 The interests of real inventors, and a proper regard for 
 the public good, demand that design patents be limited ex- 
 clusively to the field herein suggested, and it is clear to my 
 mind that a proper construction of the law fully warrants such 
 limitation. 
 
 My learned predecessor's administration was an epoch in 
 the history of the Patent Office. He established many bound- 
 
102 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 aries and landmarks tliat before had been very uncer- 
 tain and indefinite, and instituted many reforms in the office 
 practice that have rendered it far more simple and certain. 
 It is after much hesitation that I differ from any of his re- 
 corded opinions, yet in the celebrated Bartholomew case, de- 
 cided December 2, 1869, it is clear to my mind that he opened 
 the door to design patents far too widely. 
 
 The action of the primary examiner is fully sustained. 
 
■W. N. BARTHOLOMEW. 103 
 
 W. N". BAETHOLOMEW. 
 
 Appeal from Examiners-in-Chief. Noyember 23, 1871. 
 
 [Commissioner's Decisions, 1871, page 398.] 
 
 In the matter of the application of Wm. N. Baetholome'w, for letters 
 patent for an India-Rubbbr Ekasbk. 
 
 The previous grant of a design patent, covering only the form of an ar- 
 ticle, will not prevent the grant of a mechanical or functional patent 
 covering the peculiar construction of such article. 
 
 Duncan, Acting Commissioner. The present applicant is 
 also a patentee, under date of January 4, 18T0. In the patent 
 then .granted him he describes a rubber eraser molded into an 
 elongated cylindrical form, and enwrapped in a casing of 
 paper, leather, or other suitable article, which is secured to it 
 by a cement or other like means. In the application upon 
 which that patent was allowed, there was originally claimed 
 "the cylindrical rubber eraser provided with a wrapper or 
 case, as shown and described," the claim itself being thus 
 made to relate not merely to the form of the eraser, but also to 
 the mode of its construction ; but the commissioner, having the 
 case before him in person on appeal, held that, inasmuch as 
 the applicant was seeking a design patent, the mode of con- 
 struction and the composition of matter could not be allowed 
 to enter into, or in any way modify, the technical claim, but 
 that this must be confined entirely to the shape or configura- 
 tion. Accordingly, while the description setting forth thfe mode 
 of construction was permitted to stand in the specification, the 
 claim was limited to the " design for a rubber eraser, as shown 
 .and described." In other words, the thing then patented was 
 fiimply the form or shape given to the eraser. 
 
 Bartholomew now comes to the oflSce, and asks a patent 
 on the mode of construction. As before, he forms the eraser 
 by molding a vulcanizable rubber compound into a distinc- 
 tively pencil-like form, which, after vulcanization, is tightly 
 wrapped with a casing of paper, leather, or other equivalent 
 
104 CASES DECIDED IN THE tJ. S. PATENT OFFICE. 
 
 materia], secured by means of glue or other suitable cement. 
 This wrapper is to be cut away as the rubber wears down with 
 use, and the ends of the eraser are to be cut and shaped as 
 circumstances require. The object of the sheath or wrapper 
 is, in part, to keep the rubber from becoming soiled by con- 
 tact with the fingers and otherwise ; the object of the glue^ 
 which becomes hard on drying, is, to give, in connection with 
 the wrapper, a proper degree of stifiness for the required 
 manipulation in using, and the design of the pencil-like form 
 is the same as before, viz., convenience in handling and in car- 
 rying. 
 
 The claim is for " a rubber eraser composed of a stick or 
 pencil of vulcanized-rubber erasive compound of distinctively 
 pencil-like form, and a surrounding sheath of paper, leather, 
 or equivalent material, the two being united by glue or 
 other cement which, like glue, will harden on drying, substan-. 
 tially as herein shown and set forth." 
 
 The objections hitherto made in the oflSce in the allowance 
 of this claim are two-fold : First, it is said that the patent of 
 January i, 1870, is a bar to the patent now sought. The 
 board, in their decision, assert that the design patent is 
 limited by material and construction, and that under such cir- 
 cumstances the issue of another patent would be highly im- 
 proper, since the practice of the invention under either patent 
 would be an infringement of the other. In this position^ 
 however, it is believed the board are in error. This is not a 
 case where a party whose invention has to do exclusively with 
 form, and who has obtained a design patent upon it, subse- 
 quently seeks to secure a mechanical patent covering the same 
 ground. Such a practice, if it ever obtained, cannot be too 
 emphatically condemned. No man can have two valid patents 
 at the same time upon the same invention, and covering the 
 same ground. 
 
 In the present case, while it is true that in the specification 
 of the patent the construction of the eraser is fully described, 
 yet all reference thereto is carefully excluded from the claim. 
 This, in fact, was the only condition under which, in conform- 
 ity with the commissioner's decision in the premises, a design 
 
W. N. BAETHOLOMBW. 105 
 
 patent could be granted. The commissioner, referring in his 
 decision to the description of the mode of construction con- 
 tained in the specification, used these words : 
 
 " I cannot say that the presence of such matter in the 
 specification would be objectionable if descriptive merely, 
 but it could in no way be allowed to enter into or modify the 
 claim." 
 
 The original claim was changed to meet this view. It is 
 plain, therefore, that the patent covers the/brwi of the eraser 
 only, independent of any and every kind of wrapper, as well 
 as the mode in which such wrapper may be applied. It 
 would have been better, doubtless, had all description of the 
 mode of construction been omitted from the specification. It 
 is all extraneous and irrelevant matter. Still its presence 
 does not afiect the scope of the claim or modify the patent ; 
 and, if a patent should be granted upon the pending applica- 
 tion, it would not follow, as suggested, that the two patents 
 would be infringements, each upon the other. The earlier 
 patent, at least, relating to form alone, would be independent. 
 The existence of that patent, then, cannot operate as a bar to 
 the grant of another for the mode of construction, into which, 
 at most, the form shown in the existing patent enters merely 
 as one among several elements. 
 
 Again, it has been urged that the use of the leather or 
 paper wrapper upon the pencil-shaped eraser, is an instance 
 of mere double use, which, by a well-established rule, is not 
 patentable. Applica"nt himself, in one of his arguments, ad- 
 mits that for years thin rectangular blocks of erasing com- 
 pound, with the middle part incased, have been sold in the 
 market ; it is also admitted that artists' stubs, of elongated 
 cylindrical shape, and formed of paper, cork, or leather, have 
 been similarly wrapped or incased ; and it further appears 
 that a distinctively pencil-like form has been given not only 
 to such stubs, but to rubber erasers also, — for which see appli- 
 cant's design patent. From these premises it has been as- 
 sumed that, in what is now presented for consideration, there 
 is at best nothing more than the application of an old article 
 to a new use. 
 
106 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 In detetmining whether this be the correct view, inquiry 
 rflust be made as to the function. of the wrapper in its new 
 use. If the application of an old wrapper to a well known 
 form of eraser, is accomplished in the same way as its appli- 
 cation to erasers of other forms, or to other articles having 
 the same form, and is unaccompanied with any new results, it 
 must be pronounced a mere double use. But in artists' stubs, 
 and in the rectangular blocks of rubber, the wrapper is used 
 chiefly, and, for aught that appears, solely, for the purpose of 
 keeping the inclosed article from becoming soiled ; but in the 
 present instance it is claimed, and perhaps with reason, that 
 the wrapper, in order to secure the most valuable results, 
 must be made to perform a new function, viz., give greater 
 rigidity to the structure than it would otherwise possess, and 
 that the stiffness or supporting power can best be obtained 
 by the use between the wrapper and the stick of rubber of 
 glue or some other -cement that hardens on drying. Now, 
 this is a thing that was not to be anticipated as a necessary 
 result of the change made in the form of the eraser. 
 
 The use of the wrapper secured by means of a cement, 
 that on hardening will give additional stiffness, seems to bear 
 a close analogy, so far as concerns the question of patent- 
 ability, to the use of a knit fabric on the handles of whips, 
 which formed the basis of the Woodbury patent, sustained 
 by Judge Blatchford in Strong v. Noble. In that case it ap- 
 peared that prior to the invention for which the patent was 
 granted, tubular knit fabrics had been used for various pur- 
 poses, that whips were old, and that it was no new idea to 
 cover whip handles with some suitable material ; and yet the 
 court held that the application of a tubular knit fabric, as a 
 covering for whip handles, was not a double use in any such 
 sense as to invalidate the patent, assigning as the basis of the 
 decision, that it could not be told necessarily, a priori, with- 
 out experiments, that the advantages actually obtained would 
 accompany the new application of the knit fabric. 
 
 This rule would seem to be equally applicable to the pres- 
 ent case. 
 
 The decision of the board of examiners-in-chief is accord- 
 ingly overruled. 
 
WILLIAM "WHYTE. 107 
 
 WILLIAM WHYTE. 
 
 Appeal from Primary Examiner. Noyember 28, 1871. 
 
 [Commissioner's Decisions, 1871, page 304.] 
 
 In the matter of the application of Wm. "Whtte for letters patent for a 
 Design fob an Alleged Ornamental Peint fok Fabrics. 
 
 "There can be little doubt that, in the enumeration of subjects for 
 design patents, as contained in * * * statute * * regard was 
 had to the external ornamentation of articles of manufacture ; and 
 that to this end it was the intent of the law, that the various designs 
 should be so affixed to the manufactured articles, or so wrought into 
 their texture, as to become in effect a part of them." 
 
 "They were not intended to subserve a merely temporary purpose — 
 such, for instance, as to distinguish the article by their presence upon 
 it until it should have passed into the hands of the consumer." 
 
 *' In the absence from the specification of all mention of the articles, if 
 any, upon which it is proposed to place the design as an ornamenta- 
 tion, and to which it would be adapted for such a purpose, and upon 
 the intrinsic evidence of the design itself, it must be held that it is 
 really intended as a trade-mark." 
 
 Query. Ought not a design patent to specify the particular article 
 which is to embody or bear it ? And does it protect as to any other 
 article 3 
 
 Duncan, Acting Commissioner. The design shown in 
 this application consists of a shield or escutcheon, within 
 whicli is a representation of a scroll and of the lower part of 
 the human leg, the two crossing each other nearly at right 
 angles. This is entitled by the applicant an " ornamental 
 print for fabrics," and is described in the specification as a 
 "new and original impression or print to be printed or 
 painted upon paper or other fabrics, or woren or otherwise 
 worked into the same." 
 
 The examiner declines to entertain the case and inquire 
 into the novelty of the design, assigning as a reason that the 
 design is really intended for a trade-mark, and that the appli- 
 cant accordingly must obtain protection, if at all, by register- 
 
108 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 iDg it as a trade-mark, and not by patenting it as a design. 
 It is from this decision that the present appeal is taken, and 
 applicant's prayer is for an order upon the examiner direct- 
 ing him to proceed with the case. 
 
 In ex parte "William King, Commissioner's Decisions, 
 September 19, 1870, it was held that designs for trade- 
 marks are excluded from the category of subjects made 
 patentable by what is known as the design section of the 
 patent act. One reason for this ruling was that, as the stat- 
 ute in later sections provided a special means of obtaining 
 protection for trade-marks, such provision must be interpreted 
 as excluding all other modes not as specifically enacted, and, 
 therefore, as excepting trade-marks from the operation of that 
 clause which enumerates, in general terms only, as subjects 
 for design patents, " any new and useful impressiou, orna- 
 ment, pattern, print, or picture to be printed, painted, cast, or 
 otherwise placed on or marked into any article of manufac- 
 ture." The rule then laid down still governs the ofl&ce prac- 
 tice ; so that the only question at issue in this appeal is as to 
 the real object of the design to which it relates. 
 
 There can be but little doubt that, in the enumeration of 
 subjects for design patents as contained in the clause of the 
 statute above quoted, regard was had to the external orna- 
 mentation of articles of manufacture ; and that to this end it 
 was the intent of the law, that the various designs should be 
 80 affixed to the manufactured articles, or so wrought into 
 their texture, as to become in effect a part of them. They 
 were not intended to subserve merely a temporary purpose — 
 such, for instance, as to distinguish the article by their 
 presence upon it, until it should have passed into the hands 
 of the consumer ; rather, they were to be incorporated into 
 its very structure, and to abide with it, after it had reached 
 the consumer, and until obliterated by the natural and gradual 
 deterioration resulting from use. 
 
 Applying this test, how are we to regard the present ease ? 
 Is the design one that the applicant intends to use for the 
 purpose of ornamentation ? Does he propose to himself so 
 to incorporate it into the structure of the articles to which he 
 
WILLIAM "WHYTE. 109 
 
 applies it, that it will become a permanent part thereof ? To 
 be sure, he speaks of it as something " to be printed or 
 painted upon paper or other fabrics, or woven or otherwise 
 warhed into the same ; " but thei'e is no suggestion that the 
 fabrics upon which it is thus to be printed or painted, or into 
 which it is thus to be woven or otherwise wrought, are them- 
 selves to be worked up into definite articles of manufacture, 
 and are not to be used simply for temporary attachment to 
 other manufactures for the purpose of indicating their owner- 
 ship or origin. In the absence of any positive declaration to 
 the contrary, it must be assumed that the latter is the real 
 intention of the applicant, for it is difficult, if not impossible, 
 to conceive of any article of manufacture, the value of which 
 would be the least enhanced in the estimation of the public, 
 by the permanent attachment to it of the design in question. 
 There is too little of the beautiful or even the grotesque in it, 
 to warrant the expectation of such a result. If placed upon 
 a service of plate, or used for other kindred purposes, it 
 might give a special value, in the eyes of the owner, to the 
 articles upon which it is thus impressed ; but this would be a 
 matter affecting the public indirectly only, and more fre- 
 quently, perhaps, than otherwise would actually depreciate 
 the articles in the public estimation. In the absence from 
 the specification of all mention of the articles, if any, upon 
 which it is proposed to place the design as an ornamentation, 
 and to which it would be adapted for such a purpose, and 
 upon the intrinsic evidence of the design itself, it must be 
 held that it is really intended as a trade-mark. 
 
 This view is strengthened by reference to the history of 
 the case. As first filed, the drawing had the word " trade- 
 mark " imprinted upon the scroll within the shield, and the 
 oath of invention first filed spoke of the design as being for 
 a trade-mark. Since the first action of the examiner raising 
 an issue as to the character of the application, the word 
 " trade-mark " has been erased from the drawing, and an 
 amended oath has been filed, which corresponds in phraseology 
 with the specification. 
 
 The suggestion of applicant's attorney, that from the filing 
 
110 CASES DECIDED IN THE U. S. PATEjST OFFICE. 
 
 of the present application, it must be presumed, that applicant 
 does not seek to protect his design as a trade-mark, since, 
 if this were his object, he would not have proceeded 
 under the design section of the law, but under that branch 
 of it which relates to trade-marks, by which for a smaller fee 
 he would have obtained a longer term of protection, is with- 
 out force. It is more likely that applicant chose the present 
 form of application, thinking that by securing the exclusive 
 use of the design he could apply it at pleasure to all classes 
 of goods ; and that, being protected in that exclusive use, he 
 would thus, in the lapse of time, bcome possessed of a veritable 
 trade-mark for as many different classes of goods as he might 
 himself have manufactured, or might have procured to be 
 manufactured by others, while under the trade-mark sections 
 of the law, a single fee would have secured registration for 
 the design as a trade-mark in its application to a single class 
 of goods only. 
 
 If this result .would follow, there is all the more reason 
 why special care should be exercised to prevent a loss in this 
 direction to the revenues of the government by an adroit 
 evasion of the spirit of the law. It may be, however, that 
 applicant mistakes as to the extent of his rights under a 
 design patent. It is true that under the old law, there being- 
 at the time no statute specifically relating to trade-marks, 
 parties were permitted to take out patents for designs for 
 trade-marks, and this without naming any particular class of 
 goods upon which such design was to be thus used ; but in 
 ex pa/rte "W. King, above referred to, the commissioner 
 characterizes that construction of the design law which 
 tolerated this practice as a forced interpretation, and plainly 
 intimates the opinion that a design patent, to be valid, must 
 particularly specify the special article to be ornamented by 
 the pattern, print, picture, etc., upon which the patent is 
 granted. If this view be correct, the grant of such a patent 
 would create no right to the exclusive use of the design upon 
 other articles, than the particular one specified. 
 
 It is not recalled that there has been any adjudication of 
 the courts upon the validity of a design patent which contains 
 
WILLIAM WHYTE. . Ill 
 
 no specification of the class of goods to wLich the design is 
 applicable ; but the doubt thrown upon the question by the 
 above-named decision of the commissioner of patents may 
 weU be pondered by all who would surrender the particular 
 measure of protection afibrded by the trade-mark law, think- 
 ing that by so doing they can, under the design law, obtain 
 larger rights at a smaller cost. 
 
 The decision of the examiner in the premises is affirmed. 
 
112 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 J. D. DIFFENDERFEE. 
 
 Appeal. Decided July 8, 1872. 
 
 [Of. G-az. U. S. Patent Office, vol. 2, page 57.] 
 
 Appeal from the principal examiner in the matter of the appUeation of 
 John D. Diffbndbbfbk for letters patent for a Design for Desk 
 Stand ABD. 
 
 " Every applicant for a design patent has an undoubted right to show 
 both the obverse and the reverse of the ornamental work which he has 
 devised." 
 
 " But the two faces should correspond ; if one be shown entire, the other 
 should be also." 
 
 In an application for a design patent on a desk standard, applicant de- 
 scribed, in the specification, certain parts which performed mechanical 
 functions, and then claimed " The design for a desk standard, substan- 
 tially as herein shown and described." 
 
 Held, that " this language obviously carries the function .of the parts 
 mentioned into the claim," and that " applicant should be required 
 to erase from his description all reference to the function of " such 
 parts. 
 
 Thatchee, Acting Commissioner. In taking this appeal 
 applicant says : " The question for decision is, can applicant 
 show and describe the inner as well as the outer side of his 
 standard ? " I have no hesitation in giving an affirmative 
 answer to this question. Every applicant for a design patent 
 has an undoubted right to show both the obverse and reverse 
 of the ornamental work which he has devised. But the two 
 faces should correspond ; if one be shown entire, the other 
 should be also. In this case, while the obverse of the standard 
 is fully illustrated, the reverse is only partially shown. The 
 drawings should be amended to correct this error. Fig. 2 
 should be made to correspond with Fig. 1, so as to represent 
 the reverse of the entire standard. 
 
 I find, upon examination, that this is not the only ques- 
 tion in the case. In his first letter of rejection the examiner 
 states his objection to the grant of a patent as follows : 
 
J. D. DIFFEITOERFEE. 113 
 
 " The application above named embraces much more than 
 can be admitted in a design. The exterior form or con- 
 figuration is all that can be allowed. The .other parts, relating^ 
 to function, must be erased from the specification and 
 drawing." 
 
 Subsequently to this action applicant amended his specifi- 
 cation and drawing, so as to overcome, as he supposed, the 
 objection of the examiner. This, it seems, he failed to accom- 
 plish, for, on the 1st instant, the examiner rejected the cas^a 
 second time, re-stating his position as follows : 
 
 " The same objection exists to the specification as amended 
 as to the original; and nearly the same form of a school-desk 
 can be found in this room, which was placed there on the 3d 
 day of January, 18T0." 
 
 It becomes necessary, then, to examine the description and 
 claim in this case, to determine whether the function of the 
 standard forms any part of the invention claimed. Applicant 
 claims : 
 
 " The design for a desk-standard substantially as herein 
 shown and described." 
 
 Turning to the description, I find that in describing the 
 inner side or reverse of the standard, certain flanges and pro- 
 jections are described and referred to by letter, the pm'pose of 
 which, as stated by applicant, is to form supports for the 
 bottom, end pieces, and shelves of the desk. This language 
 obviously carries the function of the parts mentioned into the 
 claim for the design, for said claim refers directly back to the 
 description for its interpretation. This class of claims in ap- 
 plications for design patents has already been criticised by the 
 commissioner, and the field to be occupied by such patents. 
 clearly defined in the appeal case of Peter C. Parkinson (0. 
 D., 1871, p. 251). 
 
 The present case, in my opinion, comes clearly within the 
 ruling in the decision referred to above, and in accordance 
 therewith, the applicant should be required to erase from his 
 description all reference to the function of the standard, or 
 any portion thereof, described. 
 8 
 
114 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 T. B. DOOLITTLE. 
 
 Appeal. Decided July 31, 1873. 
 
 [Of. Gaz. U. S. Patent Office, vol. 3, page 375.] 
 
 Appeal from the primary examiner in the matter of the application of 
 T. B. DooLiTTLB for letters patent for improvement in Button-Hole 
 
 CUTTBKS. 
 
 The peculiar shape of one part of an article being designed to serve a 
 useful purpose, and not for ornamentation, it is proper subject-matter 
 for a claim in a machine patent. 
 
 Thatchee, Acting Commissioner. The fifth claim was re- 
 jected by the examiner on the ground that the invention was 
 " a proper subject of a design patent, but not for a mechanical 
 patent." 
 
 This objection was not noticed by the examiner-in-chief, 
 when considering this application on appeal, probably because 
 they very properly regarded it as a question appealable di- 
 rectly to the commissioners. Such an appeal is now taken by 
 the applicant. 
 
 The claim in question is for " the peculiar shape of the 
 end of the shield, so that all danger of gi-asping it at a dan- 
 gerous locality, will be avoided, as hereinbefore explained." 
 If the shape here referred to was for the purpose of orna- 
 mentation, the ' objection of the examiner would be valid; 
 but in the claim, utility is suggested as the object of the 
 peculiar form of the end of the shield. Upon referring to 
 the description, the useful purpose subserved by this form is 
 found to be still more distinctly set foi'th. 
 
 Inasmuch, therefore, as the peculiar shape of the end of 
 the shield is not mere fanciful ornamentation, but was devised 
 to serve a useful purpose, to wit, to form a safe handle for the 
 instrument, — it constitutes proper subject-matter for a claim 
 in a machine patent. 
 
T. B. DOOLITTLE. 115 
 
 Perhaps, however, the claim should be amended so as more 
 carefully to define the invention to which it relates, and the 
 examiner is advised to require such amendment before allow- 
 ing the patent. 
 
 The claim is, of course, open to any objection the examiner 
 may raise, if he finds, upon examination, that the invention is 
 wanting in novelty. 
 
 The decision of the examiner is overruled. 
 
 y)li:: 
 
116 CASES DECIDED IN THE U. S. PATENT OFFICE, 
 
 H. W. COLLENDEE. 
 
 , Appeal. Decided October 3, 1873. 
 
 [Of. Gaz. U. 8. Patent Office, Tol. 3, page 360.] 
 
 Appeal from the Boa/rd of JExaminers-in-cUef in the matter of the applica- 
 tion of H. "W. CoLLENDEE/or patent foT Billiabd Table.^M January 
 6, 1870. 
 
 A mechanical and a design patent cannot both be granted for the same 
 subject-matter. 
 
 But a single device may present subject-matter for both kinds of patents, 
 one coTering the plan of construction, and the other covering the de- 
 sign — the shape, form, or configuration — of the article. 
 
 Thatchee, Acting Commissioner. Applicant claims " a 
 billiard table formed with beveled side rails, or with the sides 
 of its body beveled under." 
 
 The object of beveling the sides of the frame under the 
 table is alleged to be so to change the form of the frame as to 
 make room for the leg of a player when it becomes necessary 
 for him to " hug " the table closely, and bend forward, in order 
 to strike tie cue-ball at the greatest distance without using 
 the bridge, which it is desirable to avoid. This is the theory 
 advanced ; but the fact is, this construction will not enable 
 the player to strike his cue-ball at any greater distance from 
 the cushion than the old one would. On the contrary, the 
 rule of the game being, as I am informed, that only one foot 
 must necessarily be kept upon the floor while making a shot, 
 a player cannot reach so far with his leg under the table as he 
 can when it is not under the table. The common practice, 
 which is in accordance with the rules of the game, is, in mak- 
 ing a long shot without the bridge, to rest the weight on one 
 foot or on the ball of the foot, beyond or outside the space 
 covered by the table-top, and lean forward against the cushion- 
 rail. The distance reached depends upon how tall the player 
 
H. W. COLLENDEE. 117 ' 
 
 is, and how long his arms are, and not in the least upon this 
 particular construction of the table-frame beneath the top. 
 The truth of this may be verified by observation of a game 
 between experts, and by reference to the rules of the game. 
 
 So this basis of the utility of these beveled sides vanishes 
 at once. They do not possess the practical utility alleged. 
 
 l^evertheless, I do not doubt that they do possess a peculiar 
 practical utility, not in connection, as alleged, with the long 
 shots in which the bridge is ordinarily used, so that they 
 operate to dispense with its use, but rather in connection with 
 ordinary shots, or shots where the cue-ball rests at only a 
 moderate distance from the cushion, and it is desirable to have 
 the weight of the body supported by the foot advanced rather 
 than by the bridge hand. The beveled construction of the 
 frame will allow the foot to be advanced, and the body sup- 
 ported steadily to make shots just so much further from the 
 cushion, in this advantageous position, than can be made on 
 the old tables, as there is space gained by the beveling. This 
 is an improvement, therefore, which will be valued by billiard 
 players, as is evident from the fact that beveled tables are now 
 fast superseding the old square-framed tables, and billiard- 
 saloon proprietors are compelled by the public preference to 
 supply them. 
 
 The only question, therefore, as to the patentability of this 
 improvement, upon a proper specification, is raised by the fact 
 that applicant has already taken out a design patent showing 
 and covering, as a design, the identical form of table now pre- 
 sented. Its eflfect, however, is merely to secure to him the 
 particular configuration shown. Claiming to be the inventor 
 of the useful plan of construction embodying broadly the bev- 
 eled frame as well as the configuration adopted, he now seeks 
 protection for said beveled frame without regard to configura- 
 tion. 
 
 The case of Bartholomew (0. D. 1871, p. 298) is precisely 
 in point. In that case a design patent was granted for a par- 
 ticular conformation of a rubber eraser possessing the aesthetic 
 utility and novelty required for a design patent, and afterwards 
 & patent was granted covering the plan of construction, which 
 
118 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 possessed the elements to support the grant of a mechanical 
 patent. At the same time the rule was not violated that a 
 mechanical patent and a design patent should not be granted 
 for the sam^e subject-matter. The subject-matter was essentially 
 different, although found in the same device. The same dif- 
 ference exists in the case under consideration. The definite 
 ornamental configuration presented is already secured by pat- 
 ent, and now the plan of construction — which may be of varied 
 design, and which relates exclusively to utility, except when 
 applied in connection with some particular embodiment of form 
 ■which it is made to assume for aesthetic effect as well as for 
 utility — is proper, because different, subject-matter for patent. 
 The decision of the board is reversed, and the application 
 is remanded to the examiner, who will reqiiire the specification 
 to be amended in accordance with the above suggestions, when 
 an interference may be necessary before ordering a patent tO' 
 issue. 
 
COLLENDER v. GRIFFITH. 119 
 
 COLLENDEE v. GEIFFITH. 
 
 Interference. Decided January 30, 1873. 
 
 [Of. Gaz. U. S. Patent Office, vol. 3, page 91.] 
 
 Appeal from the principal examiner in the matter of the interference ietween 
 the application of H. W. Collbndbk, for alleged improvement in Bill- 
 lAED Tables, and the patent of "W. H. Umb'fith, for a Design foe 
 BiLLiAED Tables, granted October 34, 1871. 
 
 " An interference does not necessarily result in the grant of a patent to 
 one of the parties for the subject-matter involved." 
 
 Where an applicant for a patent for a design must necessarily use the 
 construction previously patented to another, in producing the design, 
 an interference should be had between the application and the patent. 
 
 Thatchee, Acting Commissioner. This is an appeal from 
 a decision of the examiner, dissolving the interference. The 
 main reason for the dissolution is, that an interference is im- 
 proper between an application for a mechanical patent and a 
 patent for a design. 
 
 This is urged on the ground that the interests are not and 
 cannot be identical, inasmuch as the patentee of the design 
 cannot reissue and obtain a claim for the construction, even if 
 successful in the suit. Although this argument appears 
 plausible, it is really unsound and should not prevail. An 
 interference does not necessarily result in the grant of a 
 patent to one of the parties for the subject-matter involved. 
 It frequently happens that the prior inventor is adjudged, for 
 various reasons, not to be entitled to a patent. The question 
 in this case is, not whether Griffith is entitled to a patent, 
 but whether CoUender should have the patent for which he 
 prays. ISTow, it is admitted that Griffith, in applying his 
 design, must use the construction claimed by CoUender, and 
 therefore the grant to the latter of the patent sought would 
 
120 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 subordinate a design patent of earlier date. Under these cir- 
 'Cumstances, it is perfectly evident that it would be improper 
 to issue a patent to Collender until he proves himself the 
 prior inventor. An interference, therefore, was necessary, 
 and in this instance properly declared. 
 
 The decision of the examiner, dissolving the interference, 
 as overruled. 
 
T. B. OGLESBT. 1-21 
 
 T. B. OGLESBY. 
 
 Appeal. Decided February 34, 1873. 
 
 [Of. Gaz. U. S. Patent Office, vol. 3, page 211.] 
 
 Appeal from (he principal examiner in the matter of the application of 
 Thomas B. OGi;E.SBn for patent for Cotton-Gin Satt. 
 
 " If the shape * * * has been altered for the purpose of improving 
 its appearance merely, * * * then the modification is calculated 
 to produce the novelty and utility requisite to warrant the grant of a 
 design patent." 
 
 "If the shape * * * has been altered for the purpose of improving 
 its operation, and actually does, as alleged, greatly increase its effi- 
 ciency, then there is clearly presented subject-matter for a mechanical 
 patent," 
 
 Leggett, Commissioner. Applicant claims a peculiarly 
 shaped saw-tootli for cotton gins, on account of the construc- 
 tion or form of which several important advantages are 
 alleged to be gained, referring both to the cost of making 
 the tooth and to its use in ginning. I^o question is made by 
 the examiner as to the novelty or utility of the tooth, but he 
 maintains that, as it exhibits merely a change of form, it is 
 therefore proper subject-matter for a design patent only. 
 This position is not tenable in this case. Admitting that 
 there is no more than a change of form in the tooth itself, it 
 is necessary to go further, and inquire what is the object, and 
 what, are the results of the change of form. If the shape of 
 the tooth has been altered for the purpose of improving its 
 appearance merely, without changing its function or increas- 
 ing its practical efficiency, then the modification is calculated 
 to produce the novelty and utility requisite to warrant the 
 grant of a design patent. But if the shape of the tqoth has 
 been altered for the purpose of improving its operation, and 
 actually does, as alleged, greatly increase its efficiency, then 
 
122 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 there is clearly presented subject-matter for a mechanical 
 patent. When the common screw was simply provided with 
 a pointed, instead of a blunt threaded end, there was only a 
 change of its form, and seemingly a very slight and obvious 
 one. Yet the object of the change, and the advantages re- 
 sulting from it, rendered it an important and patentable 
 mechanical invention. This case is analogous, and the exam- 
 iner's decision must, therefore, be overruled. 
 
COLLENDER v. GKIFFITH. 123 
 
 COLLENDEE v. GRIFFITH. 
 
 Interference. Decided March 11, 1873. 
 [Of. Gaz. V. S. Patent Office, vol. 8, page 367.] 
 
 Appeal from the decision of ihe primary examiner in the matter of the inter- 
 ference ietween the application' of H^W. Collbndbk and the design 
 patent of "W. H. Gbipfith, granted October 34, 1871, for improvement 
 in BiLLiABD Tables. 
 
 An interference may properly be declared between an application by A. 
 for a mechanical patent, and a prior design patent to B., which shows 
 but does not claim the feature claimed in the application for the me- 
 chanical patent. 
 
 Although A. has a prior design patent, which is also prior to the design 
 patent of B., and shows the feature claimed by A. in his application 
 for a mechanical patent, such design patent to A. need not be put into 
 the interference. 
 
 In the interference, the burden of proof is on A. notwithstanding his 
 design patent. A. may have the benefit of his prior design patent by 
 putting it in evidence. 
 
 Leggett, Commissioner. This is a motion to dissolve the 
 interference. The case is somewhat anomalous. Collender 
 obtained a patent for a design for an ornamental hilliard- 
 table frame, June 6, 1871. On October 6, 1871, a design 
 patent was granted to Griffith, also, for an ornamental bil- 
 liard-table frame. The two designs, as such, are distinctly 
 dissimilar. Thei-e was no interference • between them as 
 designs, and they were properly patented. January 16, 
 1872, Collender filed his present application for a patent, 
 claiming to be the inventor of a beveled frame for billiard 
 tables, which is believed to be a material practical improve- 
 ment upon the square, vertical-sided frame in common use. 
 The beveled frame was shown in his design patent and in 
 that of Griffith. Having in itself, however, a practical, 
 tiseful function, without regard to any particular ornamental 
 
124 CASES DECIDED m THE U. S. PATENT OFFICE. 
 
 configuration or design, it was held — following the practice 
 adopted in the Bartholomew case (Commissioner's Decisions, 
 1871, p. 298) — to be proper subject-matter for a mechanical 
 patent. An interference became necessary to determine 
 which of the parties, Oollender or Griffith, was the inventor 
 of the beveled frame. In it Oollender's design patent was 
 not embraced, and the question now is, whether or not it 
 should have been. The invention now claimed can never be 
 secured to Oollender or his representatives by reissue of 
 that design patent. This is true also as to Griffith's design 
 patent. The question is, which of the parties is entitled 
 to a mechanical patent upon separate application therefor, 
 or, more immediately, whether or not Oollender is upon 
 his application. It is his application that raises this issue, 
 and not his design patent. To be sure, he is alleged to be 
 the inventor of both the design and the mechanical construc- 
 tion he shows, which are substantially identical in both his 
 cases. But inasmuch as he cannot secure protection for the 
 latter in his design patent by reissue, it is not necessary to 
 place that patent in interference with his own application. 
 That would be allowed without an interference, were it not 
 that another inventor shows the subject-matter claimed. 
 
 Neither is it necessary to place it in interference with 
 Griffith's design patent, because the two designs, as such, do 
 not interfere. The case is not altered by assuming that Col- 
 lender's design patent may be in the hands of assignees whose 
 interests might be aifected. They could never have an inter- 
 ference either with Griffith's design or Oollender's mechanical 
 patent, should he obtain one. Questions which might arise 
 between them and Oollender, growing out of the grant to him 
 of the patent he now seeks, would be of a different nature, 
 and come before another tribunal. If Griffith should be 
 awarded priority, he may file a new application, and obtain a 
 patent without obstruction from Oollender's design patent. 
 The fact that the burden of proof is upon Oollender in this 
 instance arises, under the rules, from the record, and I see no 
 reason why the rules should be modified in his favor. He can 
 put in his design patent as evidence, and thus avail himself 
 
COLLENDEE ii. GRIFFITH. 125 
 
 of it. But there is no reason why it should be embraced in 
 this interference ; and, therefore, there is none for relieying 
 him of the burdens of proof which he sustains upon the 
 records in the cases which are actually and necessarily in 
 interference. 
 
 The examiner's decision is sustained. 
 
l26 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 L. W. FAIECHILD. 
 
 Appeal. Decided March 13, 1873. 
 
 [0£ Gaz. U. S. Patent Office, vol. 3, page 323.] 
 
 Af'peal from, the principal examiner in the matter of the application of 
 L. W. Faikchild, for letters patent for a Design foe a Sign. 
 
 A name-sign, with, an imitation gold pen attached to it, held to be a 
 
 proper subject for a design patent. 
 A distinction made between such subject and the tool for which a patent 
 
 was asked in Parkinson, ex parte, Com'r Dec. 1871, page 251. 
 " All description of the mechanical construction of the article should be 
 
 eliminated " from the specification, " as well as all reference to its 
 
 purpose as a matter of utility." 
 
 Thatcher, Acting Commissioner. Applicant attaches an 
 imitation gold pen to a name-sign, and asks a patent for the 
 whole as a new design. The examiner holds that this is not 
 proper subject-matter for a design patent, and from this de- 
 cision an appeal is taken. 
 
 The decision of the commissioner in Parkinson, eai parte, 
 18Y1, is cited as authority for the opinion of the examiner. 
 In that case the article was a tool for mechanical purposes, 
 and the peculiar form, for which a design patent was asked, 
 was intended solely for purposes of utility. In the present 
 case the completed article has no mechanical function what- 
 ever, and the design represented is a matter of taste. It is 
 not, therefore, in my opinion, open to the criticisms so justly 
 made in the Parkinson case. 
 
 As the subject-matter of this application is a matter of 
 taste, and, to some extent, ornament, designed to attract the 
 eye, I think there can be no doubt of the propriety of grant- 
 ing a patent for the design as requested. 
 
 The decision of the examiner, to this extent, is overruled • 
 
L. "W. FAIRCHILD. 12Y 
 
 but, of course, without pronouncing upon the question of 
 novelty, which is not brought up by this appeal. 
 
 The specification, however, requires careful revision. All 
 description of the mechanical construction of the article 
 should be eliminated, as well as all reference to its purpose as 
 a matter of utility. All matter of this description is im- 
 proper in a design patent. The examiner will, therefore, 
 require suitable amendments in the case before further action. 
 
128 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 ALOIS KOHLEE. 
 
 Appeal. Decided May 17, 1873. 
 
 [Official Gazette, vol. 4, page 53.] 
 
 Appeal from the Board of Examinera-in- Chief, in the matter of the appli- 
 cation of Alois Kohlbk, for patent for Design fob KoLLisa Bhut- 
 teb-Slats. 
 
 Patent denied for a design shown in prior mechanical patent 'granted tp 
 
 present applicant. 
 " The design patent might have been first granted and afterward the 
 
 mechanical, but not vies versa, for the mechanical is the greater, and 
 
 must include the right to use the design shown, imless it was previously 
 
 patented, but the design is the less, and does not necessarily include 
 
 the mechanism." 
 It seems that if notice of an intention to claim the design had been 
 
 given in the application for the mechanical patent, a patent for the 
 
 design might be granted afterward. 
 
 Leggett, Commissioner. A patent was granted the ap- 
 plicant, May 7, 1872, the drawing of which exhibited the 
 design now claimed. That patent covered the construction 
 of the opposite edges of a blind-slat, whereby a peculiar 
 hinge-connection was formed. This construction was en- 
 tirely concealed from view when the slats were united to 
 form blinds. It was intended to perform a practical useful 
 function, and was wholly independent of the exterior 
 conformation of the slat shown, or of any other particu- 
 lar exterior design. It could be used as well with one 
 design exhibited by the surface of the slat as another, and 
 this fact was set forth in the specification- of the patent in 
 the following words : " A represents the slat made with any 
 suitable molding, form, or design upon their broad faces." 
 This is all of the specification of the patent that refers to the 
 
ALOIS KOHLER. 129 
 
 design. The patent does not protect it, of course, and cannot 
 be reissued so as to protect it, because it is not subject-matter 
 whicli a mechanical patent will protect. It is proper subject- 
 matter for a design patent, and the construction of the hinge- 
 connection is entirely distinct subject-matter, and was prop- 
 erly patented as a mechanical device. 
 
 In view of this state of facts, the examiner and the board 
 of examiners-in-chief have refused the application, the ex- 
 aminer holding that the patent of May 7, 1872, is a bar to the 
 patent now sought, but the applicant continues his appeal, 
 holding that, following the precedents set in the Bartholomew 
 ease (C. D., 1871, p. 298), and the CoUender case (Oflf. Gaz. 
 vol. 2, p. 360), he is entitled to a patent. 
 
 In each of the cases cited the patent for the design was 
 first obtained, and the mechanical patent subsequently applied 
 for and allowed. In the present case the mechanical patent 
 was first allowed, fully showing the design, and the design 
 patent is now sought upon drawings which are exact dupli- 
 cates of those upon which the mechanical patent was granted. 
 The cases are radically different. A design patent relates 
 only to configuration and arrangement for aesthetic effect. 
 The mechanical patent is for practically useful mechanism. 
 The design may be shown and described in the case pending 
 without developing the mechanism iipon which the patent 
 was granted, but the mechanism could not have been de- 
 scribed in accordance with the requirement of law without 
 showing some design. Hence the design patent might have 
 been first granted and afterward the mechanical, but not vice 
 versa, for the mechanical is the greater and must include the 
 right to use the design shown, unless it was previously pat- 
 ented, but the design is the less, and does not necessarily in- 
 clude the mechanism. It will be remembered that in this 
 case the special mechanism and special design have no neces- 
 sary connection, as either can be used without the other. But 
 when the applicant applied for his mechanical patent he was 
 obliged to show his invention in some form in his drawings 
 and model. He chose to adopt the identical form which he 
 now seeks to cover by a design patent. If a valid patent 
 
 9 
 
130 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 could be given him, he could then say to the assignee of his 
 former patent that said assignee shall not use the ' mechanical 
 invention in the manner and form set forth, and fully de- 
 scribed in that patent. The law certainly never contemplated 
 the granting of patents that might thus come in conflict with 
 each other. If the precedents quoted go that far, which I 
 deny, then it is high time they were reversed. 
 
 If the applicant, at the time he applied for his mechanical 
 patent, had at the same time applied for his design patent, 
 and had put a clause in the specification of the mechanical 
 application stating that the design shown was the subject of a 
 pending application for design patent, I should not question 
 his right to both patents, for then the purchaser of the me- 
 chanical patent would buy with notice, but having fully 
 shown his design in the mechanical patent without notice 
 of intention to claim it, he has barred himself from set- 
 ting up any subsequent claim to it, and has dedicated it 
 to, at least, any person who now does, or may hereafter, 
 own the mechanical patent. It might be said that both 
 of these patents will belong to the inventor, hence will 
 not come in conflict ; but as they may, by future con- 
 tingencies, either with or without the patentee's consent, fall 
 into different hands and become antagonized, the office must 
 be guided by the same principles as if the existing patent had 
 already been assigned. The cases relied upon as precedents 
 have gone to the utmost verge of propriety, if not a little be- 
 yond. The intent has been to correct mistakes, the applicants 
 having taken patents for designs when they should have taken 
 mechanical patents. 
 
 The decision of the board is afloirmed, and patent denied. 
 
BLOOMFIELD BROWEE.. 131 
 
 BLOOMFIELD BROWER. 
 
 [Vol. 4, Pat. Of. Gaz. p. 450.] 
 
 Appeal from the decision of the Primary Examiner, in the matter of the 
 application of Bloomfield Beower for patent for Design for Ims- 
 STAHBS.— Decided October 28, 1873. 
 
 An inkstand and a removable stopper, both square in their general shape 
 but with all the angles similarly chamfered, do not, together, con- 
 stitute a single design. • 
 
 The ordinary use of an article, for which a design is presented is a 
 controlling consideration in determining what separable parts may be 
 included in one design. 
 
 " There is not, * such a fitxed unity of design, considering the ordinary 
 use of an inkstand and its stopper, as to constitute the two separable 
 and often separated parts a single design." 
 
 The relative positions of the inkstand and stopper when together are 
 not always the same, and a "design cannot embrace in its scope, 
 alternates or equivalents of form." 
 
 The stand and the stopper, each present subject-matter for patent. 
 
 " The two permanently united, or so constructed as always to occupy the 
 same relative positions to each other, might also * * present subject- 
 matter for patent, were such a union consistent with their ordinary 
 use." 
 
 Thatcher, Acting Commissioner. Applicant claims a 
 '' design for a glass inkstand, and stopper of glass, made 
 square, with equally chamfered edges, substantially in the 
 manner above described." 
 
 The edges or angles of a square inkstand are all chamfered, 
 and the chamfers are all of eqnal width. A square stopper- 
 head is provided, having its edges or angles all similarly 
 chamfered. The photographic illusti-ation filed exhibits the 
 square chamfered stopper in the chamfered inkstand in such 
 a position that the sides of the squares are parallel with each 
 other. 
 
 The examiner holds that the bottle and the stopper are 
 separate articles, and exhibit separate and independent 
 
132 CASES DECIDED IN THE U. S. PATENT OFFICE. 
 
 designs. On the other hand, it is maintained in behalf of the 
 applicant, in substance, that while this is true in one sense, 
 the two have an intimate relation respecting the harmony of 
 their individual forms to produce an aesthetic effect, when 
 they are brought together for use or display, and are presented 
 to the eye as a unit. He alleges that he has made the stopper- 
 head of the form of the inkstand, in conformity with a law of 
 "fitness or correspondence relating to forms to be connected or 
 conjoined, from which what is pleasing to the eye, and what we 
 naturally term beautiful, results. There is apparently some 
 force in this reasoning ; but it should be remembered, that the 
 ordinary use of an article, for which a design is presented, is 
 a controlling consideration in determining whether or not the 
 design is proper subject-matter for patent as such. 
 
 The object of an inkstand and stopper is to preserve the 
 ink for use, but whenever it is being used, they must be 
 separated. The stopper must be removed, and that destroys 
 the design alleged to be constituted by the two. There is 
 not, therefore, such a fixed unity of design, considering the 
 ordinary use of an inkstand and its stopper, as to constitute 
 the two separable and often separated parts a single design. 
 
 Another consideration of importance is, that the relative 
 positions of the two parts when connected, ought to be 
 uniform and fixed in order to constitute a design, which is, 
 as a general rule, a thing essentially unitary and unvarying 
 in character. A design cannot embrace in its scope, alternates 
 or equivalents of form. It is arbitrary and unchangeable, 
 either by the separation or the rearrangement of its features. 
 In this case, it is obvious that there is nothing in the con- 
 struction presented to preserve the alleged design shown, even 
 when the stopper is in its place, for it may be turned out of 
 parallelism with the square of the stand, whereby the Eesthetic 
 effect described will be violated and the original design 
 destroyed. It would then be like a capital misplaced on the 
 shaft of a column. 
 
 It is not denied by the applicant, that a design for an 
 inkstand and a stopper-head, respectively might be patented. 
 Tlie exterior of the stand and the stopper, being individually 
 
BLOOMFIELD BROWER. 133^ 
 
 ornamental and novel in form, would each present subject- 
 matter for patent. The two permanently united, or so con- 
 structed as always to occupy the same relative positions to- 
 each other, might also, no doubt, present subject-matter for- 
 patent, were such a union consistent with their ordinary use ;■ 
 but neither of these conditions is found in this case. I there- 
 fore concur with the examiner that a division of this applica- 
 tion is necessary. Tlie inkstand and stopper, as presented, 
 do not constitute a single unitary design for an article of 
 manufacture. 
 
 The examiner's decision is affii'med. 
 
PART III. 
 
 DIGEST OF ALL THE REPORTED CASES, 
 
 UPON LETTEKa PATENT POK DESIGyS, 
 
 DECIDED H THE UNITED STATES COURTS, 
 
 TO JANUARY, 1, 1874. 
 
138 DIGEST OF ALL THE REPORTED CASES 
 
 tons." The specification describes the configuration of the 
 mold or block forming the foundation of the button, and 
 the mode of securing the thread with which the mold is 
 wound, but does not describe the process of wiiyiing the 
 thread; The claim is for " the radially formed ornaments on 
 the face of the mold of the button, combined with the mode 
 of winding the covering of the same, substantially as set 
 forth." 
 
 Held, that the process of winding is not claimed, but that 
 " the mode of winding claimed to be new is the arrangement 
 of the different colored threads, in the process, so as to pro- 
 duce what is called the radially formed ornaments on the face 
 of the button," 
 
 Booth, V. Oarellyet al., 1 Blatch. 247, N. Y. 18iY (* p. 11). 
 
 Inferentially, the claim in a design patent may cover a 
 genus or class of ornaments. 
 Ihid. 
 
 In a patent for an " improvement in machines for grain- 
 ing pails," one claim, among others, was made for " arranging 
 the elastic material aforesaid, whether curved or rectangular 
 in form, in a series of distinct staves or designs, substantially, 
 &c." Held, that this is not a claim for a design. 
 
 Clark V. JBousfield, 10 Wallace, Sup. Ct. 133 (*p. 20). 
 
 DATE OF PATENT. 
 
 "Where a law is in force inflicting a penalty for selling 
 patented articles unstamped with the date of the patent, the 
 selling of such articles unstamped which were made before 
 the date of the patent, has no bearing on the plaintiff's right 
 to recover. 
 
 Boot V. Ball et al, 4 McLean, 177, Ohio, 1846 (* p. 1). 
 
 IDENTITY.— INFEINGEMEN T. 
 
 It is not necessary, in order to constitute infringement, 
 " that the thing patented should be adopted in every particu- 
 lar, but if, as in the present case, the design and figures were 
 substantially adopted by the defendants, they have infringed 
 the plaintiff 's right." 
 
 Boot V. Ball et al., 4 McLean, 177, Ohio, 1846 (* p. 1). 
 
 " It is an infringement to adopt the design so as to pro- 
 duce substantially the same appearance." 
 
 md. 
 
DECIDED BY THE U. S. COURTS. 1S9 
 
 The failure of the commissioner of patents to inform a 
 questioner that an application for patent is pending, whereby 
 the questioner is led to make and sell goods embodying the 
 invention, does not affect applicant's right. 
 
 Sparkrmn v. Higgins, 1 Elatch. 205, IST. Y. 1846 (* p. 6.) 
 
 Several designs for handles of spoons and forks treated by 
 the court in analyzing and comparing them, as composed, 
 each — in general terms — of a combination of two elements, to 
 wit : 1st, the outline of the handle, and 2d, the ornamenta- 
 tion on the handle. 
 
 Gorham Mfg. Co. v. White, .7 Blatch. 513, E". T. 1870 
 (*p.30). 
 
 The outlines of two of the handles being found to be sub- 
 stantially the same, but the ornamentation thereon being held 
 to be somewhat different, the two designs were held not to be 
 substantially identical. 
 
 Ibid. 
 
 The eye of an ordinary or casual observer is not a proper 
 test as to the substantial identity of designs on different 
 articles. 
 
 JMd. 
 
 " The same principles which govern in determining the 
 question of infringement in respect to a patent for an inven- 
 tion connected with tlie operation of macliinery, must govern 
 in determining the question of infringement in respect to a 
 patent for a design." 
 
 J lid. 
 
 The only test of the substantial identity of designs on 
 different articles " is the observation of a person versed in the 
 business of designs in the particular trade in question ; of a 
 person engaged in the manufacture or sale of articles contain- 
 ing such designs ; of a person accustomed to compare such 
 designs one with another, and who sees and examines the 
 articles containing them side by side. 
 
 Hid. 
 
 " A patent for a design, like a patent for an improvement 
 in machinery, must be for the means of producing a certain 
 result or appearance, and not for the result or appearance 
 itself." 
 Ibid. 
 
 " Even if the same appearance is produced by another de- 
 sign, if the means used in such other design to produce the 
 
140 DIGEST OF ALL THE REPORTED CASES 
 
 appearance are substantially different from the means used in 
 the prior patented design to produce such appearance, the 
 later design is not an infringement of the patented one." 
 Ihid. 
 
 " The thing invented or produced for which a patent is 
 given is, that which gives a peculiar or distinctive appearance 
 to the manufacture or article to which it may be applied, or 
 to which it gives form." 
 
 Gorham Mfg. Co. v. WUU, U. S. Sup. Ct. 1871 (* p. 39). 
 
 " It is the appearance itself, * no matter by what 
 agency caused, that constitutes mainly, if not entirely, the 
 contribution to the public which the law deems worthy of 
 recompense." 
 
 Ilnd. 
 
 " To speak of the invention as a combination or process, 
 or to treat it as such, is to overlook its peculiarities." 
 lUd. 
 
 " The controlling consideration is the resultant effect." 
 11)1(1. 
 
 " The true test of identity of design * * must be 
 sameness of appearance ; and mere difference of lines in the 
 drawing or sketch, a greater or smaller number of lines, or 
 slight variances in configuration, if insufficient to change the 
 effect upon the eye, will not destroy the substantial iden- 
 tity." _ 
 
 Ihid. 
 
 " Experts * are not the persons to be deceived." " If, 
 in the eye of an ordinary observer, giving such attention 
 as a purchaser usually gives, two designs are substantially 
 the same — if the resemblance is such as to deceive such an ob- 
 server, inducing him to purchase ,one, supposing it to be the 
 other, the first one patented is infringed by the othei'." 
 
 Ihid. 
 
 If a patent for a design includes, as a part thereof, the 
 ornamentation shown in it, it is no infringement to use the 
 principal figure * without the ornamentation. 
 
 Collender v. Griffith, K Y. 1873 (* p. 61). 
 
 INJUITCTION. 
 
 A motion to dissolve a provisional injunction will not 
 be granted unless the affidavits offered in support of the 
 
DECIDED BY THE U. S. COUETa. 141 
 
 motion overcome the equity of the bill and the evidence sup- 
 porting it. 
 
 SjparJcman v. Eiggins, 1 Blatch. 205, IST. Y. 1846 ( * p. 6). 
 
 On motion to dissolve provisional injunction, " it is not 
 for the court * to examine critically the correctness or 
 even sufficiency of the application, * made, to all appear- 
 ance, in good faith, and * an attempt to make known and 
 secure the claim." 
 
 Ihid. 
 
 Provisional injunction refused where the novelty of the 
 patented design was attacked, and it was admitted that the 
 patentee had, before his application for the patent, sold large 
 quantities of articles bearing the patented design marked as 
 imoorted from abroad. 
 
 'Booth V. Garelly, 1 Blatch. 247, IST. Y. 1847 ( * p. 11). 
 
 IINYENTOR. 
 
 " To constitute an inventor (of a design), it is not neces- 
 sary he should have the manual skill and dexterity to make 
 the drafts. If the ideas are furnished by him for producing 
 the result aimed at, he is entitled to avail himself of the 
 mechanical skill of others, to carry out practically his con- 
 i"vi V3 nop 
 
 Sparkman v. Higgins, 1 Blatch. 205, N. Y. 18i6 (* p. 6). 
 
 NOYELTY. 
 
 Provisional injunction refused where the novelty of the 
 patented design was attacked, and it was admitted that the 
 patentee had, before his application for a patent, sold large 
 quantities of articles bearing the patented design marked as 
 imported from a foreign country. 
 
 Booth V. Garelly, 1 Blatch. 247, N. Y. 1847 (* p. 11). 
 
 " The act (of March 2, 1861) must * * be^held to re- 
 quire'that the shape sought to be secured shall at least be new 
 and original as applied to articles of manufacture." 
 
 Wooster v. Crane et al, 2 Fish. P. C. 583, N. Y. 1865 
 (* P- 16). 
 
 "Where the patented shape was " a common one in many 
 articles of manufacture," — " an arbitrary, chance selection of 
 one of many well known shapes all equally well adapted to 
 the purpose," — the patent was held invalid for want of 
 novelty. 
 
 lUd. 
 
142 DIGEST OF ALL THE EEPOETED CASES 
 
 It being shown that tables with sides beveled inward from 
 the top have been known before, a patent is void which claims 
 the design for a billiard table thus constructed, in order that 
 the player may advance his foot further under it. 
 Coilender v. Griffith, IST. Y. 1873 (* p. 51). 
 
 It is a mere question of judgment, not invention, how far 
 the bevel shall be carried, and a patent for the design of a 
 billiard table is not rendered valid because a much deeper 
 bevel is shown in it than has been used in other tables. 
 
 lUd. 
 
 PARTICULAR PATENTS. 
 
 Letters patent, No. 36, to David Root, for " Design for 
 Stoves," dated Sept. 9, 1845, held valid. 
 
 Boot V. Ball et al., 4 McLean, 1T7, Ohio, 1846 (* p. 1). 
 
 Letters patent, No. 139, to Don Alonzo Booth, for " De- 
 sign for Figured Silk Buttons," dated July 24, 1847, sent to 
 a trial at law. 
 
 Booth V. Garelhj et al., 1 Blateh. 247, N. Y. 1847 (* p. 11). 
 
 Letters patent. No. 1,834, to Emma C. Wooster, for " De- 
 sign for a Reel," dated Oct. 20, 1863, held invalid for want 
 of novelty. 
 
 Wooster v. Crane et al., 2 Fish. P. C. 583, N. Y. 1865 
 (* p. 16). 
 
 Letters patent, No. 45,690, to J. R. & A. J. Cross, for 
 " Apparatus for Graining Pails," dated Dec. 27, 1864, claim 
 in, held not to be a claim for a design. 
 
 Clark V. Bousfield, 10 "Wallace Sup. 0. 133 (* p. 20). 
 
 Letters patent, No. 1,439, to John Gorham, Gorham Thur- 
 ber, and Lewis Dexter, Jr., for a " Design for the Handles of 
 Table Spoons and Forks," dated July 16, 1861, held not to be 
 infringed by articles made under letters patent, No. 2,551, to 
 Le Roy S. White, for a " Design for the Handle of a Fork or 
 Spoon," dated January 15, 1867, nor by articles made under 
 letters patent. No. 2,992, to Le Roy S. White, for " Design 
 for a Spoon or Fork-Handle," dated March 31, 1868. 
 
 Gorham Mfg. Co. v. White, 7 Blateh. 513, N. Y, 1870 
 (* p. 30). 
 
 Decision last given reversed in toto. 
 
 Gorham Mfg. Co. v. White, U. S. Sup. Ct. 1871 (* p. 39.) 
 
DECIDED BY THE U. S. COURTS. 
 
 143 
 
 Letters patent, No. 4,973, to Hugh W. Collender, for 
 " Desiga for a Billiard Table," dated June 6, 1871, held in- 
 Talid for want of novelty. 
 
 Collender v. Griffith, N. Y. 1873 (* p. 51). 
 
 PATENTABLE EEQUISITES. 
 
 "The act (of March 2, 1861), although it does not require 
 utility in order to secure the benefit of its provisions, does 
 require that the shape produced shall be the result of industry, 
 effort, genius, or (and) expense, and must * * be held to 
 require that the shape or configuration sought to be secured 
 shall at least be new and original as applied to articles of 
 TTifmiiTflpt'nT'P 
 
 Wooster 'v. Crane et al, 2 Fish. P. C. 583, K T. 1865 
 (* P- 16). 
 
 Where the patented shape was " a common one in many 
 articles of manufacture," — " an arbitrary, chance selection of 
 one of many well-known shapes all equally well adapted to 
 the purpose," — from the selection of which no advantage was 
 derived, except the incidental use as a trade-mark, the patent 
 held invalid. 
 
 Hid. 
 
 PEACTICE. 
 
 In an action on a design patent, a plea that the invention 
 was in use or on sale before the application for the patent, is 
 demurrable, unless the plea aver an abandonment, or that such 
 use or sale was for more than two years before the application, 
 for — under section 7 of the act of March 3, 1839, — such use 
 or sale must have preceded the application more than two 
 years in order to invalidate the patent. 
 
 Boot v. Ball et al., 4 McLean, 177, Ohio, 1846 (* p. 1). 
 
 " A motion to dissolve a provisional injunction will not be 
 granted unless the afiidavits offered in support of the motion 
 overcome the equity of the bill and the evidence supporting 
 it." 
 
 Sparhman v. Eiggins, 1 Blatch. 205, N. T. 1846 ( * p. 6). 
 
 On motion to dissolve provisional injunction, " it is not 
 for the court * to examine critically the correctness or 
 even sufficiency of the application, * made, to all appear- 
 ance, in good faith, and * an attempt to make known and 
 secure the claim." 
 
 Hid. 
 
14i DIOEST OF ALL THE REPORTED CA.SES 
 
 Provisional injunction refused where the novelty of the 
 patented design was attacked, and it was admitted that the 
 patentee had, before his application for the patent, sold large 
 quantities of articles bearing the patented design marked as 
 imported from abroad. 
 
 Booth V. Garelly et al., 1 Blatch. 2i7, N. Y. 1847 (* p. 11). 
 
 Several designs treated by the court in analyzing and com- 
 paring them, as composed, each — in general terms — of a com- 
 bination of two elements, to wit, — 1st, the outline of the 
 handle ; and, 2d, the ornamentation on the handle. 
 
 Gorham Mfg. Co. v. White, 7 Blatch. 513, N. Y. 1870 
 (* p. 30). 
 
 " The same principles which govern in determining the 
 question of infringement, in respect to a patent for an inven- 
 tion connected with the operation of machinery, must govern 
 in determining the question of infringement in respect to a 
 patent for a design." 
 
 Ibid. 
 
 " To speak of the invention as a combination or process, or 
 to treat it as such, is to overlook its peculiarities." 
 Gorham Mfg. Co. v. White, Sup. Ct. 1871 (*p. 39). 
 
 " The controlling consideration is the resultant effect." 
 Ihid. 
 
 The defendant will not be permitted on the hearing to 
 read depositions showing prior knowledge and use of the thing 
 patented by persons whose names are not given in his answer. 
 
 Collender v. Griffith, N. Y. 1873 (* p. 51.) 
 
 PRIOE USE. 
 
 In an action on a design patent, a plea that the invention 
 was in tise or on sale before the application for the patent is 
 demurrable, unless the plea aver an abandonment, or that 
 such use or sale was for more than two years before the appli- 
 cation, for, under section 7 of the act of March 3, 1869, such 
 use or sale must have preceded the application more than two 
 years in order to invalidate the patent. 
 
 Boot V. Ball et al., 4 McLean, 177 ; Ohio, 1846 (* p. 1). 
 
 An inventor may stipulate for the sale of articles em- 
 bodying his invention, before his application for patent, with- 
 out affecting his right to a patent. 
 
 Sj>arhnan v. Higgins, 1 Blatch. 205 N. Y. 1866 (* p. 6). 
 
DECIDED IN THE U. S. PATENT OFFICE. 145 
 
 The 7th section of the act of March 3, 1839, allowing two 
 years' public use and sale of an invention prior to application 
 for patent — held, applicable to design patents granted under 
 the act of August 29, 1842. 
 
 Booth V. Garelly et al, 1 Blatch. 247, IST. Y. 1847 (* p. 11). 
 
 Query, whether the sale of an article bearing a design is a 
 sale of the design. 
 IMd. 
 
 Provisional injunction refused where the novelty of the 
 patented design was attacked, and it was admitted that the 
 patentee had, before his application for the patent, sold large 
 quantities of articles bearing the patented design, marked as 
 imported from abroad. 
 
 Ihid. 
 
 UTILITY. 
 
 "The act (of March 2, 1861), although it does riot require 
 utility in order to secure the benefit of its provisions, does re- 
 quire that the shape produced shall be the result of industry, 
 effort, genius, or (and) expense." 
 
 Wooster r. Crane et al, 2 Fish. P. C. 683, N. Y. 1865 
 (*p.l6). 
 
 "Where the patented shape was " a common one in many 
 articles of manufacture " — " an arbitrary, chance selection of 
 one of many well-known shapes, all equally well adapted to 
 the purpose " — from the selection of which no advantage was 
 derived except the incidental use as a trade-mark, the patent 
 held invalid. 
 
 Ibid. 
 
 " A design for a configuration of an article of manufacture 
 is embraced within the statute as a patentable design," and 
 "the object * * * may solely be increased utility." 
 
 Gorham Mfg. Co. v. WUU, 7 Blatch. 613, JST. Y. 1870 
 (*p.30). 
 
 "The acts of Congress which authorize the grant of pat- 
 ents for designs were plainly intended to give encouragement 
 to the decorative arts. They contemplate not so much utility 
 as appearance." 
 
 Gorham Mfg. Co.. v. White, Sup. Ct. 1871 (* p. 39). 
 
 10 
 
PART lY. 
 
 DIGEST OF ALL THE REPORTED CASES, 
 
 BEAEING UPON LETTERS PATENT FOE DESIGNS, 
 
 DECIDED IN THE D. S. PATENT OFFICE, 
 
 TO JANUARY 1, 1874. 
 
DIGEST. 
 
 [Note. — ^The letters C. D. refer to the Commissioners' Decisions. The stars (*) 
 refer to pages in this book.] 
 
 APPLICATlOJSr. 
 
 An applicant for a design patent must make his election 
 at the time of making application, of the term, three and one- 
 half, seven, or fourteen years, for which he desires his patent 
 to issue, and, at the same time, pay the prescribed fee for the 
 so elected term. 
 
 Mayo, I. a, ex parte, 0. D. Feb. 23,'1870, p. 14 (*p. T5), 
 Fisher, C. 
 
 " It is Bot a matter of discretion with the commissioner 
 whether the subject of an application be a machine or a de- 
 sign for a manufacture." " It is a matter of law in which a 
 mistake is fatal. These subjects of invention or contrivance 
 are, in truth, as distinct from each other as either is from 
 copyright." 
 
 'Sellers, O. H., ex parte, C. D. June 8, 1870, p. 58 (*p. 81), 
 Fisher, C. 
 
 There is "no discretion or authority vested in the com- 
 missioner to turn this application " — an application for a 
 mechanical patent — "into an application for a design, nor 
 any process by which it can be accomplished, short of a new 
 application." 
 
 lUd. 
 
 CLAIM. 
 
 " I can see no reason, under the law, why designs may not 
 be generic, why what are called 'broad claims' may not be 
 made to them, and why the doctrine of artistic or aesthetic 
 equivalents may not be applied to them." 
 
 Bartholomew, W. N., ex pa/rte, C. D. Dec. 2, 1869, p. 103 
 (*p. 65), Fisher, C. 
 
 "The practice of the office has not been uniform" as to 
 granting or denj'ing generic claims in design patents. 
 Ihid. 
 
 "A valid patent may be granted for a new genus or class 
 
150 DIGEST OF ALL THE REPORTED CASES 
 
 of ornaments, as well as for specific ornaments, l^iongh * * * 
 every species, variety, and individual, having distinct charac- 
 teristics, under such a genus, might also be patented, the pat- 
 ent being subordinate and tributary to that which covered the 
 class." 
 lUd. 
 
 " There is no provision in, or fair construction of, the act 
 relating to letters patent for designs, which forbids the union 
 of two or more claims or clauses of claim in a single patent." 
 
 Sheppard, I. A., ex parte, C. D. March 8, 1870, p. 22, 
 (*p. 79), Fisher, C. 
 
 There has been no uniform practice to the contrary, by the 
 Patent Oflfice, in the granting of design patents. 
 Il>id. 
 
 " If the design contains features which are new, singly and 
 in combination, no reason is known * * * why they may not 
 be so claimed." 
 
 Ibid. 
 
 Mechanical construction is not claimable in a design 
 patent. 
 
 Fenno, E. E., ex parte, C. D. Eeb. 27, 1871, p. 52 (*p. 
 91), Duncan, A. C. 
 
 In an application for a design patent on a desk standard, 
 applicant described in the specification certain parts which 
 performed mechanical functions, and then claimed " The de- 
 sign for a desk standard substantially as herein shown and 
 described." Held, that " this language obviously carries the 
 function of the parts mentioned into the claim," and that 
 " applicant should be required to erase from his description 
 all reference to the function of" such parts. 
 
 Diffenderfer, J. D., ex parte, July 8, 1872, 2 Of Gaz. 57 
 (*p. 112), Thatcher, A. C. 
 
 EQUIYALENTS. 
 
 " I can see no reason, under the law, why designs may not 
 be generic ; why wliat are called " broad claims " may not be 
 made to them ; and why the doctrine of artistic or aesthetic 
 equivalents may not be applied to them." 
 
 Bartholomew, W. JSf., ex parte, C. D. Dec. 2, 1869, p. lOa 
 (*p. 65), Fisher, C. 
 
 EVIDENCE. 
 A. had a design patent upon a billiard table. B. had a 
 
DECIDED m THE U. S. PATENT OFFICE. 151 
 
 later design patent on billiard table, stowing but not claiming 
 the design shown in A.'s design patent. A., still later, made 
 application for a mechanical patent on billiard tables, claim- 
 ing a construction which necessarily included the use of the 
 design shown in both the design patents. Held, tliat A.'s 
 application for mechanical patent should be put into interfer- 
 ence with B.'s design patent, and that A.'s design patent need 
 not be put into the interference, and that the burden of proof 
 is on A., notwithstanding his design patent. A. may have the 
 benefit of his prior design patent by putting it in evidence. 
 
 CoUender v. Griffith, 3 Of. Gaz. 267, March 11, 18Y3 
 (*p. 123), Leggett, C. 
 
 EXTENSION. 
 
 The utility of an article bearing a patented design taken 
 into account in considering the propriety of extending the 
 patent for the design. 
 
 Solomon, B. L., C. D. Aug. 17, 1869, p. 49 (*p. 62), 
 Hodges, A. C. 
 
 Since the passage of the act of July 8, 1870, the commis- 
 sioner has no power to extend patents for designs issued since 
 March 2, 1861. 
 
 Sperry, E. IF., C. D. Oct. 28, 1870, p. 139 (*p. 88), 
 Duncan, A. C. 
 
 The fact that the application for the extension of such a 
 patent was filed before the passage of the act of July 8, 1870, 
 does not preserve the right to such extension. 
 
 Hid. 
 
 FEES. 
 
 An applicant for a design patent must make his election, 
 at the time of making application, of the term — three and 
 one-half, seven, or fourteen years — for which he desires his 
 patent to issue, and, at the same time, pay the prescribed fee 
 for the so elected term. 
 
 Mayo, 1. a, ex parte, 0. D. Feb. 23, 1870, p. 14 (*p. 76), 
 Fisher, C. 
 
 IDENTITY. 
 
 "It would seem to be too plain for argument that the new 
 design, or impression, or shape, might be so generic in its 
 character as to admit of many variations, which should em- 
 
152 DIGtEST OF ALL THE REPORTED OASES 
 
 body its subsequent characteristics, and be entirely consistent 
 with a substantial identity of form." 
 
 Bartholomew, W. N., ex:pa/rte, 0. D. Dec. 2, 1869, p. 103 
 (* p. 65), Fisher, 0. 
 
 " I can see no reason, under the law, why designs may not 
 be generic ; why what are called 'broad claims' may not be 
 made to them, and why the doctrine of artistic or aesthetic 
 equivalents may not be applied to them." 
 
 Ibid. 
 
 "A valid patent may be granted for a new genus or class 
 of ornaments, as well as for specific ornaments, though, * * * 
 every species, variety, and individual, having distinct charac- 
 teristics, under such a genus, might also be patented, the pat- 
 ent being subordinate and tributary to that which covered the 
 class." 
 
 Tbid. 
 
 A design for a circular clock-case, having flaring or slop- 
 ing sides, composed of rounded rings or laminse of different 
 colored woods, so that the various stripes of color are seen 
 from whatever direction the case is viewed, is not anticipated 
 by a circular clock case, of common form, which, if viewed 
 from the front shows two stripes of wood and two of brass ; 
 but, if viewed from the sides, only one of brass and one of wood. 
 
 Tyler, W. Z., C. D. April 27, 1871, p. 106 (*p. 95), 
 Leggett, 0. 
 
 Nor by an oval picture-frame of alternate rings of different 
 colored woods, the outer rings having the greater projection, 
 showing, when viewed in front, alternate stripes of different 
 colors, but, if viewed from the side, only a single wood of a 
 single color. 
 
 Hid. 
 
 INTEEFEEENCE. 
 
 " An interference does not necessarily result in the grant 
 of a patent to one of the parties for the subject-matter 
 involved." 
 
 Collender v. Griffith, Jan. 30, 1873, 3 Of. Gaz. 91 (* p. 11 9), 
 Thatcher, A. C. 
 
 "Where an applicant for a patent for a design must neces- 
 sarily use the construction previously patented to another, 
 in producing the design, an interference should be had 
 between the application and the patent. 
 
 IMd. 
 
DECIDED IN THE U. S. PATENT OFFICE. 153 
 
 An interference may properly be declared between an 
 application by A. for a mechanical patent, and a prior design 
 patent to B., which shows but does not claim the feature 
 claimed in the application for the mechanical patent. 
 
 Collender v. Griffith, Mch. 11, 1873, 3 Of. Gaz. 267 
 (*p. 123),Leggett,0. 
 
 Although A. has a prior design patent, which is also 
 prior to the design patent of B. and shows the feature claimed 
 by A. in his application for a mechanical patent, such design 
 patent to A. need not be put into the interference. 
 
 Hid. 
 
 In the interference, the burden of proof is on A., notwith- 
 standing his design patent. A. may have the benefit ol 
 his prior design patent, by putting it in evidence. 
 
 Ihid. 
 
 NOVELTY. 
 
 " A new shape or configuration is independent of materials 
 or modes of manufacture. If the shape be old as applied to 
 the thing, it cannot avail that the thing is produced by a new 
 process or wrought in a new material. If cast hexagonal 
 columns are old, no patent can be granted for wrought columns 
 of an hexagonal shape." 
 
 Sellers, G. E., C. D. June 8, 1870, p. 58 (* p. 81), Fisher, 0. 
 
 Applicant sought a design patent for a stove pipe damper, 
 which was like a prior damper, except in the shape of a 
 certain orifice. Held, that if applicant could show superior 
 utility in his form of orifice, that would entitle him to a 
 patent. 
 
 Fenno, E. E., 0. D. Feb. 27, 1871, p. 52 (* p. 91), Duncan, 
 A. 0. 
 
 " The material used or mode of construction employed 
 cannot in any way affect the question of novelty or patent- 
 ability," in relation to design patents. 
 
 Tyler, W. L., C. D. Ap. 27, 1871, p. 106 (* p. 95), Leggett, 
 C 
 
 A design for a circular clock case, having fiaring or slop- 
 ing sides composed of founded rings or laminae of different 
 colored woods, so that the various stripes of color are seen 
 from whatever direction the ease is viewed, is not anticipated 
 by a circular clock case of common form which if viewed 
 
15 i DIGEST OF ALL THE REPORTED CASES 
 
 from the front, shows two stripes of wood and two of brass, 
 but if viewed from the sides, only one of brass and one of 
 wood. 
 Ihid. 
 
 Nor by an oval picture frame of alternate rings of different 
 colored goods, the outer rings having the greater projection, 
 showing, when viewed in front, alternate stripes of different 
 colors, but, if viewed from the side, only a single wood of a 
 single color. 
 
 Ihid. 
 
 " A prerequisite for a patent of any kind, is an exercise 
 of inventive, genius. This is no less true of design than 
 of functional patents." 
 
 Weinlerg, P., 0. D. Sept. 6,, 1871, p. 244 (* p. 97), 
 Leggett, C. 
 
 The word " produced," as used in the statute relating to 
 design patents, was not intended to permit the grant of 
 design patents " without evidence of the exercise of inventive 
 genius, * * * nor was it intended in any way to let down 
 the standard for grant of patents." 
 
 Ihid. 
 
 " ' Invented or produced,' as used in this section of the 
 law, means the exercise of a higher faculty than would have 
 been indicated by ' invented ' alone." 
 
 Ihid, 
 
 " In mechanism an exercise of constructive genius may, 
 perhaps, be sufficient to obtain a patent, but a design patent 
 presupposes an exercise of c?"ea^4we genius. Original thought 
 is demanded, a new idea must be begotten and embodied." 
 
 J hid. 
 
 " A mere substitution of one color for another possesses 
 no element of originality, and indicates no exercise of genius, 
 and cannot, therefore, become the subject of a patent ; neither 
 can any blending or arrangement of colors, unless a new 
 sesthetical effect is produced — an original idea indicated." 
 
 Ihid. 
 
 " Creative genius is demanded in giving existence to a 
 new and original design." 
 
 Parkinson, P. C, C. D. Sept. 25, 1871, p. 251 (* p. 99), 
 Leggett, C. 
 
DECIDED IN THE U. S. PATENT OFFICE. 155 
 
 " The man who comes to the office with a machine or 
 article of manufacture, and seeks a design patent simply for 
 some slight and unimportant change of form or color, requir- 
 ing neither inventive nor creative genius, and producing no 
 new or Eesthetic eifect, deserves but little favor or considera- 
 tion." 
 
 Hid. 
 
 The previous grant of a design patent covering only the 
 form of an article, will not prevent the grant of a mechanical 
 or functional patent covering the peculiar construction of 
 such article. 
 
 Bartholomew, W. N., C. D. Nov. 23, ISYl, p. 298 (* p. 103), 
 Duncan, A. C. 
 
 " If the shape - * * has been altered for the purpose of 
 improving its appearance merely, * * * then the modification 
 is calculated to produce the novelty and utility requisite to 
 warrant the grant of a design patent." 
 
 Oglesly, T. J3., 3 Of. Gaz. 211, Feb. 24, 18Y3 (* p. 121), 
 Leggett, C. 
 
 Patent denied for a design shown in prior mechanical 
 patent granted to present applicant. 
 
 Kohler, A., 4 Of. Gaz. 53, May 17, 1873 (* p. 128), Leggett, 
 C 
 
 " The design patent might have been first granted and 
 afterward the mechanical, but not vice versa, for the mechan- 
 ical is the greater, and must include the right to use the 
 design shown, but the design is the less and does not neces- 
 sarily include the mechanism." 
 
 iUd. 
 
 It seems that if notice of an intention to claim the design 
 had been given in the application for the mechanical patent, 
 a patent for the design might be granted afterward. 
 
 IMd. 
 
 PATENTABLE SUBJECT-MATTEE. 
 
 Letters patent allowed for the design of an article on the 
 
 grotmd of the utility of the article. 
 
 Crane, J., ex parte, C. D. Ap. 20, 1869, p. 7 (* p. 59), 
 Foote, C. 
 
 "The construction which has been given to that act 
 (the act of Aug. 29, 1842), by the office, ever since its 
 
156 DIGEST OF ALL THE REPORTED CASES 
 
 passage in 1842, is that it relates to designs for ornament 
 merely: something of an artistic character as contradis- 
 tinguished to those of convenience or utility." 
 Hid. 
 
 " Considerable reflection upon the subject has satisfied me, 
 that the objects and intent of the statute extend beyond the 
 limit assigned to it by the office." 
 
 Ihid. 
 
 " I am unable to perceive any good reasons why designs 
 for utility are not fairly and properly embraced within the 
 statute, as well as those relating to ornamentation merely." 
 
 Il)id. 
 
 ""Whenever there shall be produced by the exercise of 
 industry, genius, eflFort and expense, any new and original de- 
 sign, form, configuration or arrangement of a manufactured 
 article, it comes within the provisions and objects of the act 
 creating design patents, whatever be its nature, and whether 
 made' for ornament merely, or intended to promote conveni- 
 ence and utility." 
 
 lUd. 
 
 " The doctrine of the office has been for a long time, that 
 a patent for a design, * * * could only be issued for articles 
 possessed of artistic excellence." 
 
 Solomon, B. Z., C. D. Aug. 17, 1869, p. 49 (*p. 62), ' 
 Hodges, A. C. 
 
 "But it is now held that 'any new and original design, 
 form, configuration, or arrangement of a manufactured arti- 
 cle,' comes within the scope of the act of 1842 (and, of 
 course, within that of 1861, sec. 11), 'whether made for 
 ornament merely, or intended to promote convenience or 
 utility.' " 
 
 ihid. 
 
 " A valid patent may be granted for a new genus or class 
 of ornaments as well as for specific ornaments, though * * * 
 every species, variety, and individual, having distinct charac- 
 teristics, under such a genus, might also be patented, the pat- 
 ent being subordinate and tributary to that which covered 
 the class." 
 
 Bartholomew, W. JV., ex parte, C. D. Dec. 2, 1869, p. 103 
 <* p. 65), Fisher, C. ' ' i^ 
 
DECIDED IN THE U. S. PATENT OFFICE. 157 
 
 " It has been the practice of the office to grant design pat- 
 ents for useful forms, as well as for those of arUstic excellence. 
 Ibid. 
 
 " The class of cases named in the act as arising from 
 'new shape or configuration,' includes within it all those 
 new changes of form which involve increase of utility." 
 
 Ibid. 
 
 " Modes of operation or construction, principles of action, 
 combinations to secure novelty or utility of movement, or 
 compositions of matter can hardly be said to be ' shapes, con- 
 figurations, or designs.' " 
 
 Ibid. 
 
 "Where the sole utility of the new device arises from its 
 new shape or configuration * * * it may fairly be included 
 among the subjects which the act of 1842 was designed to 
 protect." 
 
 Ibid. 
 
 " These patents are granted solely for new shapes or forms, 
 and the form being new, it is immaterial by what process that 
 form is attained. The composition of matter or the mode of 
 construction is neither ' design,' ' shape,' nor ' configura- 
 tion,' and must be protected, if at all, under a patent of an- 
 other kind." 
 
 Ibid. 
 
 " It is not a matter of discretion with the commissioner 
 whether the subject of an application be a machine, or a de- 
 sign for a manufacture." " It is a matter of law in which a 
 mistake is fatal. These subjects of invention or contrivance 
 are in truth as distinct from each other as either is from copy- 
 right." 
 
 jSellers, G. H., C. D. June 8, 1870, p. 58 (*p. 81)^ 
 Fisher, 0. 
 
 '> 
 
 " A new shape or configuration is independent of mate- 
 rials or modes of manufacture. If the shape be old as applied 
 to the thing, it cannot avail that the thing is produced by a 
 new process, or wrought in a different material. If cast hex- 
 agonal columns are old, no patent can be granted for wrought 
 columns of an hexagonal shape." 
 
 Ibid. 
 
 The provision of section 77 of the act of July 8, 1870, 
 " by prescribing the statutory mode of obtaining protection 
 
158 DIGEST OF ALL THE EEPORTED CASES 
 
 for a trade-mark, excludes all other modes not expressly 
 provided for, and operates as a construction of section Tl, in 
 excluding trade-marks from the list of subjects intended to be 
 protected as designs." ' 
 
 King, W., C. D. Sept. 19, 1870, p. 109 (*p. 85), Fisher, 0. 
 
 Mechanical construction is not claimable in a design 
 patent. 
 
 lenno, E. R., C. D. Feb. 2T, 1871, p. 52 (*p. 91), Dun- 
 can, A. C. 
 
 In the statute relating to design patents there is "no lim- 
 itation as to the use to which the article, wrought into the 
 particular shape designed for it, is to be subjected; and no 
 suggestion that mere beauty of form or ornamental configura- 
 tion are the ends sought." 
 
 Ihid. 
 
 " The language " — of the statute — " expressly implies that 
 utility may be the sole object had in view, in the invention or 
 selection of the particular form to be impressed upon the 
 manufacture." 
 
 lUd. 
 
 "The present law"— the act of July 8, 1870— "is differ- 
 ent from that which it supersedes. Formerly it was only re- 
 quired that the design be new and original ; now it must be 
 new, useful, and original." 
 
 Ihid. 
 
 Applicant sought a design patent for a stove-pipe damper 
 which was like a prior damper except in the shape of a cer- 
 tain orifice. Held, that if applicant could show superior 
 utility in his form of orifice, that would entitle him to a 
 patent. 
 
 Ihid. 
 
 " The material used or mode of construction employed, 
 cannot, in any way, affect the question of novelty or patenta- 
 bility," in relation to design patents. 
 
 Tyler, ^V. Z., C. D. April 27, 1871, p. 106 (*p. 95), Leg- 
 gett, C. 
 
 "The law never was intended to give a man a design 
 patent to serve merely tlie purpose of a trade mark." 
 
 Weinlerg, P., 0. D. Sept. 6, 1871, p. 244 (*p. 97), Leg- 
 gett, C. 
 
DECIDED IN THE U. S. PATENT OFFICE. 169 
 
 " A prerequisite for a patent of any kind is an exercise of 
 inventive genins. This is no less true of design than of func- 
 tional patents." 
 
 lUd. 
 
 The word " produced," as used in the statute referring to 
 design patents, was not intended to permit the grant of de- 
 sign patents " without evidence of the exercise of inventive 
 genius, * * * nor was it intended in any way to let 
 down the standard for gi-ant of patents." 
 
 Hid. 
 
 " ' Invented or produced,' as used in this section of the 
 law, means the exercise of a higher faculty than would have 
 been indicated by ' invented ' alone." 
 
 lUd. 
 
 " A mere substitution of one color for another possesses no 
 element of originality, and indicates no exercise of genius, and 
 cannot, therefore, become the subject of a patent ; neither 
 can any blending or arrangement of colors, unless a new 
 gesthetical effect is produced — ^an original idea indicated." 
 
 I hid. 
 
 " The law authorizing design patents was intended to pro- ' 
 vide for an entirely different class of inventions " from those 
 covered by machine or functional patents — " inventions in the 
 field of esthetics, taste, beauty, ornament." 
 
 Parkinson, P. C, C. D., Sept. 25, '71, p. 251 (* p. 99), • 
 Leggett, C. 
 
 " The term ' useful,' in relation to designs, means adapta- 
 tion to producing pleasant emotions." 
 Ihid. 
 
 " By ' article of manufacture,' as used in this section " of 
 the design patent law, " the Legislature evidently meant only 
 ornamental articles, articles used simply for decoration." 
 
 lUd. 
 
 " Creative genius is demanded in giving existence to a new 
 and original design." 
 Ibid. 
 
 " The man who comes to the ofiice with a machine or arti- 
 cle of manufacture, .and seeks a design patent simply for some 
 slight and unimportant change of form or color, requiring 
 neither inventive nor creative genius, and producing no new 
 or aesthetic effect, deserves but uttle favor or consideration." 
 
 IMd. 
 
160 D-IGEST OF ALL THE REPORTED CASES 
 
 The case of Bartholomew, 0. D. Dec. 1869, p. 103, com- 
 mented on and dissented from. 
 IMd. 
 
 " There can be little doubt that, in the enumeration of 
 subjects for design patents as contained in the * * * stat- 
 ute, * * * regard was had to the external ornamenta- 
 tion of articles of manufacture ; and that to this end it was the 
 intent of the law that the various designs should be so affixed 
 to ^he manufactured articles, or so wrought into their texture, 
 as to become in effect a part of them." 
 
 Wkyte, W., C. D. Nov. 28, 1871, p. 304 (*p. 107), Dun- 
 can, A. 0. 
 
 " They were not intended to subserve a merely temporary 
 purpose — such, for instance, as to distinguish the article by 
 their presence upon it until it should nave passed into the 
 hands of the consumer." 
 
 Ibid. 
 
 " In the absence from the specification of all mention of 
 the articles, if any, upon which it is proposed to place the de- 
 sign as an ornamentation, and to which it would be adapted 
 , for such a purpose, and upon the intrinsic evidence of the de- 
 sign itself, it must be held that it is really intended as a trade- 
 mark." 
 Ihid. 
 
 Query. Ought not a design patent to specify the particu- 
 lar article which is to embody or bear it ? And does it pro- 
 tect as to any other article ? 
 
 IMd. 
 
 The peculiar shape of one part of an article being designed 
 to serve a useful pui-pose, and not for ornamentation, it is 
 proper subject-matter for a claim in a machine patent. 
 
 Doolittle, T. B., 2 Of. Gaz. 275, July 31, 1872 (* f. 114), 
 Thatcher, A. C. 
 
 A mechanical and a design patent cannot both be granted 
 for the same subject-matter. 
 
 Collender, E. W., 2 Of. Gaz. 360, Oct. 2, 1872 (* p. 116), 
 Thatcher, A. C. 
 
 But a single device may present subject-matter for both 
 kinds of patents, one covering the plan of. construction and 
 the other the design — the shape, form, or configuration — of 
 the article. 
 
 Ihid. 
 
DECIDED IN THE U. S. PATENT OEFIOE. 161 
 
 " If the shape * * * has been altered for the purpose 
 of improving its appearance merely, * * * then the modi- 
 fication is calculated to produce the novelty and utility requi- 
 site to warrant the grant of a design patent." 
 
 Oglesby, T. B., 3 Of. Gaz. 211, Feb. 24, 18Y3 (*p. 121), 
 Leggett, C. 
 
 " If the shape * * * has been altered for the purpose 
 of improving its operation, and actually does, as alleged, 
 greatly increase its efficiency, then there is clearly presented 
 subject-matter for a mechanical patent." 
 
 IMd. 
 
 A name-sign with an imitation gold pen attached to it, 
 held to be a proper subject for a design patent. 
 
 FaircMld, L. F"., 3 Of. Gaz. 323, March 12, 1873 (*p. 
 126), Thatcher, A. C. 
 
 A distinction made between such subject and the tool for 
 which a patent was asked in Parkinson, ex parte, C. D. 1871, 
 p. 281. 
 
 IMd. 
 
 PEACTICE. 
 
 " The construction which has been given to that act (the 
 act of Aug. 29, 1842) by the office ever since its passage in 
 1842, is that it relates to designs for ornament merely ; some- 
 thing of an artistic character as contradistinguished to those 
 of convenience or utility." 
 
 Crane, J., 0. D. Ap. 20, 1869, p. 7 (*p. 59), Foote, C. 
 
 " The doctrine of the office has been for a long time, that 
 a patent for a design * * * could only be issued for arti- 
 cles possessed of artistic excellence." 
 
 Solomon, B. L., C. D. Aug. 17, 1869, p. 49 (*p. 62), 
 Hodges, A. 0. 
 
 "But it is now held that 'any new and original design,, 
 form, configuration, or arrangement of a manufactured arti- 
 cle,' comes within the scope of the act of 1842 (and of course 
 within that of 1861, sec. 11), whether made for ornament 
 merely or intended to promote convenienee or utility." 
 
 liid. 
 
 " The practice of the office has not been uniform " as to. 
 granting or denying genei'ic claims in design patents. 
 
 BartholoTmw, W. JV., C. D.. Dec. 2.,. 1869, p. 103 (* p. 66)^, 
 
 Fisher, 0, 
 
 11 
 
162 DIGEST OF ALL THE REPORTED OASES 
 
 It has been the practice of the office to grant design 
 patents for useful forms as well as for those of artistic excel- 
 lence. 
 
 Hid. 
 
 A patent other than a design patent can not be reissued 
 and changed, either as a whole, or by a division into a patent 
 for a design. 
 
 Stuart <& Bridge, C. D. Feb. 23, 1870, p. 15 (*p. 77), 
 Fisher, 0. 
 
 "There is no provision in, or fair construction of, the act 
 relating to letters patent for designs which forbids the union 
 of two or more claims or clauses of claim in a single patent." 
 
 Sheppa/rd, I. A., C. D. March 8, 1870, p. 22 (* p. 79) 
 Fisher, 0. 
 
 There has been no uniform practice to the contrary by the 
 Patent Office in the granting of design patents. 
 Ihid. 
 
 " If the design contains features which are new, singly, 
 and in combination, no reason is known * * * why they 
 may not be so claimed." 
 
 Hid. 
 
 " It is not a matter of discretion with the commissioner 
 whether the subject of an application be a machine or a de- 
 sign for a manufacture." " It is a matter of law in which a 
 mistake is fatal." 
 
 Sellers, G. H., C. D. June 8, 1870, p.. 58 (* p. 81), Fisher, C. 
 
 There is " no discretion or authority vested in the commis- 
 sioner to turn this application " — for a mechanical patent — 
 " into an application for a design, nor any process by which 
 it can be accomplished, short of a new application." 
 
 Hid. 
 
 " In the absence from the specification of all mention of 
 the articles, if any, upon which it is proposed to place the 
 design as an ornamentation, and to which it would be adapted 
 for such a purpose, and upon the intrinsic evidence of the de- 
 sign itself, it must be held that it is really intended as a trade- 
 
 Whyte, W., C. D. Nov. 28, 1871, p. 304 (*p. 107), Dun- 
 can, A. C. 
 
 Query. Ought not a design patent to specify the particu- 
 lar article which is to embody or bear it? 
 Hid. 
 
DECIDED m THE U. S. PATENT OFFICE. 163 
 
 " Every applicant for a design patent has an undoubted 
 right to show both the obverse and the. reverse of the orna- 
 mental work which he has devised." 
 
 Diffenderfer,J. B., 2 Of. Gaz. 67, Julv 8, 1872 (*p. 112), 
 Thatcher, A. 0. • 
 
 " But the two faces should correspond ; if one be shown 
 entire the other should be also.'' 
 lUd. 
 
 In an application for a design patent on a desk standard, 
 applicant described, in the specification, certain parts which 
 performed mechanical functions, and then claimed " The de- 
 sign for a desk standard substantially as herein shown and 
 described." Held, that '•' this language obviously carries the 
 function of the parts mentioned into the claim," and that 
 " applicant should be required to erase from his description 
 all reference to the function of" such parts, 
 
 lUd. 
 
 " An interference does not necessarily result in the grant 
 of a patent to one of the parties for the subject-matter in- 
 volved." 
 
 CoUender v. Griffith, 3 Of. Gaz. 91, January 30, 1873 
 (* p. 119), Thatcher, A. C. 
 
 Where an applicant for a patent for a design must neces- 
 sarily use the construction previously patented to another in 
 producing the design, an interference should be had between 
 the application and the patent. 
 
 Hid. 
 
 An interference may properly be declared between an ap- 
 plication by A, for a mechanical patent and a prior design 
 patent to B., which shows but does not claim the feature 
 claimed in the application for the mechanical patent. 
 
 CoUender v. Griffith, 3 Of. Gaz. 267, March 11, 1873 
 (* p. 123), Leggett, C. 
 
 Although A. has a prior design patent which is also prior 
 to the design patent of B., and shows the feature claimed by 
 A. in his application for a mechanical patent, such design 
 patent to A. need not be put into the interference. 
 
 Ibid. 
 
 In the interference, the burden of proof is on A., notwith- 
 standing his design patent. A. may have the benefit of his 
 prior design patent by putting it in evidence. 
 
 Ibid. 
 
164 DIGEST OF ALL THE EEPORTED CASES 
 
 " All description of the mechanical construction of the 
 article should be eliminated " — from the specification — " as 
 ■well as all reference to its purpose as a matter of utility." 
 
 .Fairchild, L. W., 3 Of. Gaz. 323, March 12, 1873 (* p. 126), 
 Thatcher, A. C. 
 
 Patent denied for a design shown in a prior mechanical 
 patent to present applicant. " The design patent might have 
 been first granted and afterward the mechanical, but not vice 
 versa." 
 
 EoMer, A., 4 Of. Gaz. 53, May 17, 1873 (* p. 128), Leg- 
 gett, 0. 
 
 It seems that if notice of an intention to claim the design 
 had been given in the application for the mechanical patent, 
 a patent for the design might be granted afterward. 
 
 Ibid. 
 
 An inkstand and a removable stopper, both square in 
 their general shape, but with all the angles similarly cham- 
 fered, do not, together, constitute a single design. 
 
 JBrower, £., 4 Of. Gaz. 450, Oct. 28, 1873 ( *p. 131). 
 
 The ordinary use of an article, for which a design is pre- 
 sented, is a controlling consideration in determining what 
 separable parts may be included in one design. 
 
 " There is not, * such a fixed unity of design, consider- 
 ing the ordinary use of an inkstand and its stopper, as to 
 constitute the two separable and often separated parts a 
 single design." 
 
 Ibid. 
 
 The relative positions of the inkstand and stopper when 
 together are not always the same, and a " design cannot em- 
 brace in its scope alternates or equivalents of form." 
 
 Ibid. 
 
 The stand and the stopper each present subject-matter for 
 patent. 
 Ibid. 
 
 " The two, permanently united, or so constructed as al- 
 ways to occupy the same relative positions to each other, 
 might also, * * present subject-matter for patent, were 
 such a union consistent with their ordinary use." 
 
 Ibid. 
 
DECIDED IN THE U. S. PATENT OFFICE. 165 
 
 PKIOE USE. 
 
 " No provision is made for use or sale of the invention " 
 — in the matter of design patents—" prior to the application, 
 as in the case of other inventions." 
 
 SiMo/rt & Bridge, 0. D. February 23, 1870, p. 15 (*p. 77), 
 Eisher, C. 
 
 " The design must not have been known or used by others 
 prior to the application of the inventor." 
 
 Ibid. 
 
 " If the design be described in a prior patent granted 
 either to himself or others, it is known to others within the 
 meaning of the law." An invention of a design, if shown in 
 a patent for a mechanical invention, is lost, and cg^not be in- 
 cluded in a subsequent application and patent for a design." 
 
 lUd. 
 
 The previous grant of a design patent covering only the 
 form of an article, will not prevent the grant of a mechanical 
 or functional patent covering the peculiar construction of such 
 article. 
 
 Bartholomew, W. JSf., 0. D. JSTovember 23, 1871, p. 298 
 (* p. 103), Duncan, A. C. 
 
 Patent denied for a design shown in a prior mechanical 
 patent granted to present applicant. 
 
 Kohler, A., 4 Of Gaz. 53, May 17, 1873 ( p. 128), Leg- 
 gett, C. 
 
 " The, design patent might have been first granted and 
 afterward the mechanical, but not vice versa, for the mechan- 
 ical is the greater, and must include the right to use the de- 
 sign shown, unless it was previously patented, but the design 
 is the less, and does not necessarily include the mechanism." 
 
 Ibid. 
 
 It seems that if notice of an intention to claim the design 
 had been given in the application for the mechanical patent, 
 a patent for the design might be granted afterward. 
 
 EEISSUE. 
 
 A patent other tlian a design patent cannot be reissued 
 and changed, either as a whole, or by a division, into a patent 
 for a design. 
 
 Stuart <& Bridge, 0. D. February 23, 1870, p. 15 (* p. 77), 
 Fisher, 0. 
 
166 DIGEST OF ALL THE REPORTED OASES 
 
 TEEM. 
 
 An applicant for a design patent must make his election, 
 at the time of making application, of the term — three and 
 one-half, seven, or fourteen years — for which he desires his 
 patent to issue, and, at the same time pay the prescribed fee 
 for the so elected term. 
 
 Mayo, I. a, C. D. Feb. 23, 1870, p. 14 (* p. 75), Fisher, C. 
 
 UTILITY. 
 
 Letters patent allowed for the design of an article on the 
 ground of the utility of the article. 
 
 Grane, /., C. D. April 20, 1869, p. 'r(*p. 69), Foote, C. 
 
 " The construction which has been given to that act (the 
 act of Aug. 29, 1842) by the office, ever since its passage in 
 1842, is that it relates to designs for ornament merely; some- 
 thing of an artistic character as contradistinguished to those 
 of convenience or utility." 
 
 Ibid. 
 
 " Considerable reflection upon the subject has satisfied me 
 that the objects and intent of the statute extend beyond the 
 limit assigned to it by the office." 
 
 Ibid. 
 
 " I am unable to perceive any good reasons why designs 
 for utility are not fairly and properly embraced within the 
 statute, as well as those relating to ornamentation merely." 
 
 Ibid. 
 
 " Whenever there shall be produced by the exercise of in- 
 dustry, genius, effort and expense, any new and original de- 
 sign, form, configuration or arrangement of a manufactured 
 article, it comes within the provisions and objects of the act 
 creating design patents, whatever be its nature, and whether 
 made for ornament merely, or intended to promote con- 
 venience and utility." 
 
 Ibid. 
 
 "The doctrine of the office has been for a long time, that 
 a patent for a design * * * could only be issued for articles 
 possessed of artistic excellence." 
 
 Solomon, B. L., C. D. August 17, 1869, p. 49 (*p. 62), 
 Hodges, A. C. 
 
DECIDED IN THE U. S. PATENT OFFICE. 16T 
 
 "But it is now held that ' any new and original design, 
 form, configuration, or arrangement of a manufactured article ' 
 comes within the scope of the act of 1842 (and of course with- 
 in that of 1861, sec. 11), whether made for ornament merely, 
 or intended to promote convenience or utility." 
 
 Ibid. 
 
 The utility of an article bearing a patented design taken 
 into account in considering the. propriety of extending the 
 patent for the design. 
 
 Ibid. 
 
 It has been the practice of the office to grant design pat- 
 ents for useful forms, as well as for those of artistic excellence. 
 
 Bartholomew, W. JST., C. D. December 2, 1869, p. 103 
 (* p. 65), Fisher, 0. 
 
 " The class of cases named in the act as arising from 
 ' new shape or configuration' includes within it all those new 
 changes of form which involve increase of utility." 
 
 Ibid. 
 
 "Modes of operation or -construction, principles of action, 
 combinations to secure novelty or utility of movement, or 
 compositions of matter can hardly be said to be ' shapes, con- 
 figurations or designs.' " 
 
 Ibid. 
 
 " Where the sole utility of the new device arises' from its 
 new shape or configuration, * * it may fairly be included 
 among the subjects which the act of 1842 was designed to 
 protect." 
 
 Ibid. 
 
 In the statute relating to design patents, there is "no limi- 
 tation as to the use to which the article wrought into the par- 
 ticular shape designed for it, is to be subjected ; and no sug- 
 gestion that mere beauty of form or ornamental configuration 
 are the ends sought." 
 
 Fenno, E. B., C. D. Feb. 27, 1871, p. 52 (* p. 91), Dun- 
 can, A. C. 
 
 -'5 
 
 " The language " — of the statute — " expressly implies that 
 utility may be the sole object had in view, in the invention 
 or selection of the particular form to be impressed upon the 
 manufacture." 
 
 Ibid. 
 
168 DIGEST OF ALL THE REPORTED CASES 
 
 "The present law"— the act of July 8, 1870— "is dif- 
 ferent from that which it supersedes. Formerly it was only- 
 required that the design be new and original ; now it must be 
 new, useful, and original." 
 
 Hid. 
 
 Applicant sought a design patent for a stove-pipe damper 
 which was like a prior damper except in the shape of a cer- 
 tain orifice. Held, that if applicant could show superior 
 utility in his form of orifice, that would entitle him to a 
 patent. 
 
 Ihid. 
 
 " The law authorizing design patents was intended to pro- 
 vide for an entirely different class of inventions" — from those 
 properly covered by machine or functional patents — " inven- 
 tions in the field of esthetics, taste, beauty, ornament." 
 
 Parkinson, P. C, 0. D. S,eptember 25, 1871, p. 251 (* p. 99), 
 Leggett, C. 
 
 " The term ' useful ' in relation to designs means adapta- 
 tion to producing pleasant emotions." 
 Ibid. 
 
 " By ' article of manufacture,' as used in this section " — 
 of the design patent law — "the Legislature evidently meant 
 only ornamental articles, articles used simply for decoration." 
 
 Ibid. 
 
 The case of Bartholomew, C. D. 1869, p. 103, commented 
 on and dissented from. 
 Ibid. 
 
 There can be little doubt that, in the enumeration of sub- 
 jects for design patents as contained in the * * * statute * * *, 
 regard was had to the external ornamentation of articles ot 
 
 TT13TmTflf*1"nT'P 
 
 Whyte, W., 0. D. Nov. 28, 1871, p. 304 (* p. 107), Dun- 
 can, A. 0. 
 
 The peculiar shape of one part of an article being de- 
 signed to serve a useful purpose, and not for ornamentation, 
 it is proper subject-matter for a claim in a machine patent. 
 
 PooUttle, T. P., 2 Of. Gaz. 275, July 31, 1872 (* p. 114), 
 Thatcher, A. C. 
 
 " If the shape * * * has been altered for the purpose of 
 
DECIDED IN THE U. S. PATENT OFFICE. 169 
 
 improving its appearance merely, * * * then the modification 
 is calculated to produce the novelty and utility requisite to 
 warrant the grant of a design patent." 
 
 Oglesly, T. B., 3 Of. Gaz. 211, Feb. 24, 1873 (* p. 121), 
 Leggett, C. 
 
 If the shape * * * has been altered for the purpose of im- 
 proving its operation, and actually doeS, as alleged, greatly 
 increase its efficiency, then there is clearly presented subject- 
 matter for a mechanical patent." 
 
 lUd. 
 
 A name-sign with an imitation gold pen attached to it 
 held to be a proper subject for a design patent. 
 
 FairoMU, L. F., 3 Of. Gaz. 323, March 12, 1873 (*p. 126), 
 Thatcher, A. C. 
 
 A distinction made between such subject and the tool 
 for which a patent was asked in Parkinson, ex -parte, C. D. 
 1871, p. 251. 
 
 Ibid. 
 
 " All description of the mechanical construction of the ar- 
 ticle should be eliminated " — from the specification — " as well 
 as all reference to its purpose as a matter of utility." 
 
 Ibid. 
 
PART Y. 
 
 COMMENTS 01 THE LAW 
 
 KELATING TO 
 
 LETTERS PATEKT FOR DESIGNS. 
 
COMMENTS ON THE LAW. 
 
 CHAPTEE I. 
 
 HISTORY AND ANALYSIS OF THE STATUTES RELATING TO 
 LETTERS PATENT FOR DESIGNS. 
 
 The first statute authorizing the grant of letters 
 patent for designs, was the act approved August 29th, 
 1842, 6th volume of the Statutes at Large, chapter 
 263, page 543, section 3, reading as follows : 
 
 " Section 3. And he it further enacted. That any citizen or 
 citizens, or alien or aliens, having resided ofae year in the United 
 States, and taken the oath of his or their intention to become a 
 citizen or citizens, who by his, her, or their own industry, genius, efforts 
 and expense, may have invented or produced any new and original 
 design for a manufacture, whether of metal or other material or 
 materials, or any new and original design for the printing of woolen, 
 silk, cotton or other fabrics, or any new and original design for a 
 bust, statue, or bas relief, or composition in alto or basso relievo, 
 or any new and original impression or ornament, [or] * to be 
 placed on any article of manufacture, the same being formed in 
 marble or other material, or any new and useful pattern, or print, 
 or picture, to be either worked into or worked on, or printed, or 
 painted, or cast, or otherwise fixed on any article of manufacture, or 
 any new and original shape or configuration of any article of manu- 
 facture, not known or used by others before his, her, or their inven- 
 tion or production thereof, and prior to the time of his, her, or their 
 application for a patent therefor, and who shall desire to obtain an 
 exclusive property or right therein, to make use and sell, and vend 
 
 * The " or " inclosed in brackets is plainly superfluous. 
 
174 COMMENTS ON THE LAW. 
 
 the same, or copies of the same, to others by them to be made, 
 used and sold, may make application in writing to the commissioner 
 of patents, expressing such desire, and the commissioner, on due 
 proceedings had, may grant a patent therefor, as in the case now of 
 application for a patent : Provided, That the fee in such cases, which 
 by the now existing laws would be required of the particular appli- 
 cant shall be one-half the sum, and that the duration of said patent 
 shall be seven years, and that all the regulations and provisions 
 which now apply to the obtaining or protection of patents, not 
 inconsistent with the provisions of this act, shall apply to applications 
 under this section." 
 
 The foregoing statute was superseded by the act 
 approved March 2d, 1861, volume 12 of the Statutes 
 at Large, chapter 37, page 130, section 11, reading as 
 follows ; 
 
 "Section 11. And he it further enacted, Th&t any citizen or 
 citizens, or alien or aliens, having resided one year in the United 
 States, and taken the oath of his or their intention to become a 
 citizen or citizens, who by his, her, or their own industry, genius, 
 efforts, and expense, may have invented or produced any new and 
 original design, [of] a manufacture, whether of metal or other 
 material or materials, [and] original design for a bust, statue, or 
 bas relief, or composition in alto or basso relievo, or any new and 
 original impression or ornament, [or] to be placed on any article of 
 manufacture, the same being formed in marble or other material, or 
 any new and useful pattern or print, or picture to be either worked 
 into or worked on, or printed, or painted, or cast, or otherwise fixed 
 on any article of manufacture, not known or used by others before 
 his, her, or their invention or production thereof, and prior to the 
 time of his, her, or their application for a patent therefor, and who 
 shall desire to obtain an exclusive property or right therein, to make, 
 use and sell, and vend the same, or copies of the same, to others by 
 them to be made, used and sold, may make application in writing to 
 the commissioner of patents, expressing such desire, and the com- 
 missioner, on due proceedings had, may grant a patent therefor, as 
 in the case now of application for a patent, for the term of three 
 and one-half years, or for the term of seven years, or for the term 
 of fourteen years, as the said applicant may elect in his application : 
 
COMMENTS ON THE LAW. 1Y5 
 
 Provided, That the fee to be paid in such application, shall be, for 
 the term of three years and six months ten dollars, for seven years 
 fifteen dollars, and for fourteen years thirty dollars: And provided, 
 That the patentees of designs, under this act shall be entitled to the 
 extension of their respective patents, for the term of seven years, 
 from the day on which said patents shall expire, upon the same 
 terms and restrictions as are novr provided for the extension of 
 letters patent." * 
 
 The act of March 2d, 1861, was superseded by 
 the act approved July 8th, 18*70, volume 16 of the 
 Statutes at Large, chapter 230, page 198, sections 11, 
 <fec., the law now in force, reading as follows : 
 
 "Section 11. And be ii further enacted. That any person who 
 by his own industry, genius, efforts, and expense, has invented or 
 produced any new and original design for a manufacture, bust, 
 statue, alto relievo or has relief; any new and original design 
 for the printing of wo^olen, silk, cotton, or other fabric; any new 
 and original impression, ornament, pattern, print, or picture 
 to be printed, painted, cast, or otherwise ,placed on or worked 
 into any article of manufacture ; or any new, useful and original 
 shape or configuration of any article of manufacture, the same not 
 having been known or used by others before his invention or pro- 
 duction thereof, or patented, or described in any printed publication, 
 may, upon payment of the duty required by law, and other due 
 proceedings had, the same as in cases of invention or discoveries, 
 obtain a patent therefor. 
 
 " Section 72. And be it further enacted. That the commissioner 
 may dispense with models of designs when the design can be suffix 
 ciently represented by drawings or photographs. 
 
 " Section 73. And be it further enacted, That patents for designs 
 may be granted for the term of three years and six months, or for 
 seven years, or for fourteen years, as the applicant may in his appli- 
 cation elect. 
 
 " Section 74. And be it further enacted. That patentees of de- 
 
 * The first " or " inclosed in brackets shotild probably read " for." The 
 " and " inclosed in brackets should probably read " any." The last " or " in 
 brackets is clearly superfluous. 
 
176 COMMENTS ON THE LA.W. 
 
 signs issued prior to March two, eighteen hundred and sixty-one, 
 shall be entitled to extension of their respective patents for the term 
 of seven years, in the same manner and under the same restrictions 
 as are provided for the extension of patents for inventions or dis- 
 coveries issued prior to the second day of March, eighteen hundred 
 and sixty-one. 
 
 " Sectton 75. And be it further enacted, That the following shall 
 be the rates of fees in design cases : 
 
 For three years and six months, ten dollars. 
 For seven years, fifteen dollars. 
 For fourteen years, thirty dollars. 
 
 For all other cases in which fees are required, the same rates 
 as in cases of inventions or discoveries. 
 
 " Section 76. And be it further enacted, That all the regulations 
 and provisions which apply to the obtaining or protection of patents 
 for inventions or discoveries, not inconsistent with the provisions of 
 this act, shall apply to patents for designs. 
 
 " Section 111. And be it further enacted, That the acts and parts 
 of acts set forth in the schedule of acts cited, hereto annexed, are 
 hereby repealed without reviving any acts or parts of acts repealed 
 by any of said acts, or by any clause or provisions thereof: Pro- 
 vided however, That the repeal hereby enacted shall not affect, im- 
 pair, or take away any right existing under any of said laws ; but 
 all actions and causes of action, both in law and equity, which have 
 arisen under any of said laws, may be commenced and prosecuted, 
 and if already commenced, may be prosecuted to final judgment and 
 execution in the same manner as though this act had not been 
 passed, excepting the remedial provisions of this act shall be appli- 
 cable to all suits and proceedings hereafter commenced : And pro- 
 vided also, That all applications for patents pending at the time of 
 the passage of this act, in cases where the duty has been paid, shall 
 be proceeded with and acted on in the same manner as though filed 
 after the passage thereof: And provided further, fhsX sl\ offenses 
 which are defined and punishable under any of said acts, and all 
 penalties and forfeitures created thereby, and incurred before this 
 act takes effect, may be prosecuted, sued for, and recovered, and 
 such offenses punished according to the provisions of said acts, 
 which are continued in force for that purpose." 
 
COMMENTS ON THE LAW. 177 
 
 Schedule of statutes cited and repealed, as printed in 
 the Statutes at Large, including such portions only 
 of the appropriation hills referred to as a/re ap- 
 plicable to the Patent Office. 
 
 August 29, 1842, cHapter 203, volume 5, page 543. 
 
 March 2, 1861, chapter 88, volume 12, page 246. 
 Analysis of the Act of Au&ust 29, 1842. 
 
 WHO MAY TAKE. — Citizens and aliens resident one year in 
 the United States, and having taken the oath of intention to 
 become citizens. 
 
 REQUISITE QUALITIES.— The design must be the result of ap- 
 plicant's own industry, genius, efforts and expense. 
 
 SUBJECT-MATTER.— Any new and original design for a manu. 
 faoture of metal or other material. 
 Any new and original design for the printing of woolen, silk, 
 
 cotton, or other fabrics. 
 Any new and original design for a bust, statue, bas-relief, or com- 
 position in alto or basso relievo. 
 
 1 to be placed on any article of 
 
 Any new and original impression ' manufacture, the same being 
 
 " " ornament 
 
 formed in marble or other 
 material. 
 
 Any new and useful pattern 
 " print 
 " " picture 
 
 to be either worked into or 
 worked on, or printed or painted, 
 or cast, or otherwise fixed on, any 
 article of manufacture. 
 
 Any new and original shape of any article of manufacture. 
 
 Any new and original configuration of any article of manufacture. 
 
 AS TO NOVELTY.— The design must not have been known or 
 used by others before applicant's invention or production there- 
 of, and prior to his application. 
 12 
 
178 COMMENTS ON THE LAW. 
 
 FEE.— One-half the sum required of the particular applicant for a 
 
 functional patent. 
 TERM. — Seven years. No provision for extension. 
 
 Analysis of the Act of Maech 2, 1861. 
 
 WHO MAY TAKE.— Citizens and aliens resident one year in the 
 United States, and having taken the oath of intention to become 
 citizens. 
 
 REQUISITE QUALITIES.— The design must he the result of ap- 
 plicant's own industry, genius, efforts and expense. 
 
 SUBJECT-MATTER. — Any new and original design for a manu- 
 facture of metal or other material. 
 An original design for a bust, statue, bas-relief, or composition in 
 
 alto or basso relievo. 
 
 ■) to be placed on any article of 
 Any new and original impression ( ^^^uf^^t^re formed in marble 
 " oraament ^ ^^ other material. 
 
 to be either worked into or 
 worked on, or printed or painted, 
 or cast, or otherwise fixed on, any 
 article of manufacture. 
 Any new and original shape of any article of manufacture. 
 Any new and original configuration of any article of manufacture. 
 
 AS TO NOVELTY.— The design must not have been known or 
 used by others before applicant's invention or production there- 
 of, and prior to his application. 
 
 FEE.— 110 00 $15 00 $30 00 
 
 TERM. — 3^ years. 7 years. 14 years. 
 
 EXTENSION. — Design patents granted under this act to be ex- 
 tensible for seven years upon the same terms as other patents. 
 
 Analysis of the Act of July 8, 1870. 
 
 WHO MAY TAKE.— Any person. 
 
 REQUISITE QUALITIES.— The design must be the result of ap- 
 plicant's own industry, genius, efforts and expense. 
 
 Any new and useful pattern 
 " " print 
 
 " " picture 
 
 y 
 
COMMENTS ON THE LAW. 179 
 
 SUBJECT-MATTER.— Any new and original design for a manu- 
 facture. . 
 Any new and original design, for a bust, statue, alto-relievo or 
 
 bas-relief. 
 Any new and original design for the printing of woolen, silk 
 
 cotton, or other fabrics. 
 Any new and original impression 
 " " ornament 
 
 " " pattern 
 
 " " print 
 
 " " picture 
 
 to be printed, painted, cast, 
 or otherwise placed on or 
 worked into .any article of 
 manufacture. 
 
 Any new, useful and original shape ) of any article of 
 
 " " " configuration j manufacture. 
 
 AS TO NOVELTY.— The design must not have been known or 
 used by others before applicant's invention or production there- 
 of, or patented or described in any printed publication. 
 
 FEE.— $10 00 $15 00 $30 00 
 
 TERM. — 3^ years. 7 years. 14 years. 
 
 EXTENSION. — No provision for, of future patents. Design^ 
 patents granted prior to March 2, 1861, made extensible upon 
 the same terms as other patents. 
 
 The act of March 2, 1861, differs from the act of 
 August 29, 1842, in not specifying as patentable 
 subject-matter, " any new and original design for the 
 printing of woolen, silk, cotton or other fabrics," but 
 as the same subject-matter is plainly included under 
 the head of " any new and useful pattern, print or 
 picture to be either worked into or worked on, or 
 printed, or painted, or cast, or otherwise fixed on any 
 article of manufacture," this difference is more apparent 
 than real. The act of 1861, further differs from the 
 act of 1842, as to the government fee, and the duration 
 of the patent. Under the act of 1842, the duration 
 of the patent was made absolute at seven years, while 
 the fee was fixed at one-half the fee required for other 
 
180 COMMENTS ON THE LAW. 
 
 patents, so that a change in the fee for other patents 
 would entail a similar change in the fee for design 
 patents. The act of 1861 established a sliding scale, 
 both as to duration and fees; design patents were 
 made grantable, at the election of the applicant, for 
 the term of three years and six months, upon a fee of 
 ten dollars, for seven years upon a fee of fifteen dollars, 
 or for fourteen years upon a fee of thirty dollars. 
 
 A still further difference was made between the 
 acts of 1842 and 1861, as to extensibility; in the 
 act of 1842 no provision was made for extension, while 
 in the act of 1861 future design patents were made 
 extensible upon the same terms, and under the same 
 restrictions as other patents. 
 
 The act of July 8, ISVO, differs from the act of 
 1861, and also from the act of 1842, in allowing 
 " any person " to take a design patent, while the two 
 former acts only permitted them to be taken by " any 
 citizen or citizens, or alien or aliens, having resided, 
 one year in the United States, and taken the oath of 
 his or their intention to become a citizen or citizens." 
 
 The act of 1870 specifies as patentable subject- 
 matter, though in more concise phraseology, everything 
 specified in the act of 1842, restoring the matter 
 relating to " the printing of woolen, silk, cotton or 
 ■other fabrics," which had been omitted in the act of 
 1861. 
 
 The qualifications constituting patentable novelty, 
 differ in the act of 1870, from both the preceeding 
 acts ; in the former two it was required that the design 
 must have been " not known or used by others before 
 his (applicant's), her, or their invention or production 
 thereof, and prior to the time of his, her, or their 
 
COMMENTS ON THE LAW. 181 
 
 application for a patent therefor," while the require- 
 ment in the act of 1870, is that the design must be 
 not "known or used by others before his (applicant's) 
 invention or production thereof, or patented or de- 
 scribed in any printed publication," the requirement 
 in this regard being assimilated, in the statute of 18Y0, 
 to the requirements as to other kinds of patents. 
 
 As to fees and duration, the act pf 1870 is iden- 
 tical with the act of 1861, and differs the same as 
 that statute from the act of 1842. 
 
 The act of 1870 differs from the act of 1861, 
 and — as to future patents — agrees with the Act of 
 1842, as to extensibility ; patents under the act of 
 1861 were extensible, design patents granted under 
 the act of 1870 are not. This latest act, however, 
 expressly makes design patents granted under the act 
 of 1842 extensible, while they were not so before. An 
 adj.udication of the Patent Office holds, that the act of 
 1870 takes away the extensibility of patents granted 
 under the act of 1861; an attempt? will be made, 
 further on, to show that this position is unsound. 
 
CHAPTER II. 
 
 PATENTABLE SUBJECT-MATTER. 
 
 It is but a mild statement of a notorious fact to 
 say that, until within a recent period, the Patent 
 Office has not recognized design patents as occupying 
 a field peculiarly and distinctively their own, with 
 well defined limits. Design patents have been issued 
 for articles on the ground of the utility of their shapes 
 as well as for artistic forms, figures and shapes, and in 
 some cases for purely mechanical arrangements. It 
 has been a common device when a mechanical or func- 
 tional patent could not be procured upon an article, 
 to take a design patent upon it for the purpose of 
 enabling the inventor or owner to mark it as "pat- 
 ented," and this without regard to whether the article 
 embodied proper subject-matter for a design patent 
 or not. 
 
 Why this should have been permitted when the 
 purpose and spirit of the law is very plain from its 
 text, and when the law existing before the passage of 
 the first design patent act afforded ample protection 
 to all inventions to which the design patent act is 
 not peculiarly applicable, is not readily explainable, 
 except on the hypothesis of the existence of an ami- 
 able desire on the part of the commissioners to allow 
 some kind of a patent to every applicant. One ex- 
 cellent method to be followed in ascertaining the true 
 construction of a statute law is to consider the law 
 
PATENTABLE SUBJECT-MATTER. 183 
 
 or laws relating to tlie same or kindred subjects whicli 
 existed before the passage of the act sought to be con- 
 strued, and to find from such consideration what was 
 the want left unsatisfied by the old law, the nature of 
 this want affording a key to the mind of the legis- 
 lator who originated the statute under discussion. 
 
 Following this method of inquiry and construction 
 with reference to the design patent act of August 29th, 
 1842, it will be found that there existed at the time 
 of the passage of this act copyright laws affording 
 protection to books, maps, charts, cuts, engravings, 
 prints, and musical compositions; and that there were 
 also patent laws affording protection to new and use- 
 ful arts, machines, manufactures, and compositions of 
 matter* and improvements thereon, including, in gen- 
 eral terms, processes, machines, compounds, and articles 
 of manufacture designed to serve some useful purpose. 
 
 Outside of these two classes of intellectual pro- 
 ductions, there was a third class to which no protec- 
 tion had been given, comprising such things as statues 
 and other productions of the sculptor's art valuable 
 for aesthetic purposes only; beautiful forms and ap- 
 pearances given to articles useful iu themselves, as 
 vases, clocks, and silver plate; patterns, figures, or 
 pictures to be woven into, or printed or impressed 
 upon textile fabrics, as carpets, shawls and dress 
 goods; patterns for printing upon wall paper; and 
 generally all those things intended to give an orna- 
 mental or pleasing appearance to articles, the chief 
 purpose of which is a useful one. 
 
 Statues and other productions of the sculptor's art, 
 intended solely to gratify a taste for the ideal and the 
 beautiful, cannot, perhaps, be classed logically in every 
 
184 COMMENTS ON THE LAW. 
 
 respect with the other things named, whose chief pur- 
 pose is a useful one — in the common and homely ac- 
 ceptation of that word — but they can be logically 
 classed together in that it requires the same faculty, 
 power or talent to produce the one as the other. It 
 requires the exercise of the same power or faculty, in 
 kind, to produce a beautiful vase as to model a beauti- 
 ful statue. 
 
 We find, then, in the objects named in the law, a 
 large, congruous, and important class of intellectual 
 productions to which no protection was given by the 
 then existing laws ; and it may therefrom be inferred 
 that it was exclusively this class of cases not covered 
 by the former laws that the design patent act was in- 
 tended to protect. 
 
 It will be observed that, with the exception of 
 busts, statues, bas-reliefs and compositions in alto or 
 basso relievo, all the things named in the law as 
 constituting patentable subject-matter are things de- 
 signed to give an ornamental or pleasing appearance 
 to articles useful in themselves, and irrespective of 
 their artistic excellence, and it is not unreasonable to 
 assume that it was this application of aesthetic ideas 
 -or principles to the adornment of useful articles, mov- 
 ing in the minds of the legislators who drafted the 
 laws of 1842 and 1861, that induced them to insert 
 the word " useful " into the text when they named as 
 patentable subject-matter "any new and useful pat- 
 tern, print or picture, to be either worked into, or 
 worked on, or printed, or painted, or cast, or other- 
 wise fixed on any article of manufacture ; " and in the 
 mind of the legislator who drafted the law of 1870, 
 when he named as patentable subject-matter "any 
 
PATENTABLE SUBJECT-MATTEK. 185 
 
 new, useful, and original shape or configuration of any 
 article of manufacture." All inventions or discoveries 
 having utility as their basis, were fully protected by 
 laws other than those relating to designs, and it is not 
 reasonable to suppose that the originators of the de- 
 sign patent acts intended to offer another method of 
 protection to things already protected. It would then 
 seem tolerably plain that the legislators who origin- 
 ated the design patent acts had in mind, in making 
 use of the word "useful," designs for ornament ap- 
 plied to articles capable of serving a useful purpose, 
 and in this sense an ornamental pattern, print, picture, 
 shape, or configuration may be properly termed " use- 
 ful " in the common acceptation of that word. 
 
 Commissioner Leggett, in the case of Parkinson, 
 G. D., 1871, 251, says that "the term 'useful,' in 
 relation to designs, means adaptation to producing 
 pleasant emotions." "While this explanation is highly 
 ingenious, and may be the right one, it certainly gives 
 to the word a meaning which is not common ; to many 
 it will appear more reasonable that the draftsman 
 of the law meant an ornamental pattern, print, picture, 
 shape, or configuration applied to a useful article. 
 
 The question as to whether ornamentation forms 
 the sole and exclusive basis of patentable design, has 
 been the subject of conflicting decisions, both in the 
 courts and the Patent Office, and a resume of these 
 decisions may not be uninstructive. 
 
 In the case of Wooster v. Crane et al., 2 Fish. P. 
 C, 583, N. Y. 1865, the judge spoke of the patented 
 shape as " a common one, in many articles of manu- 
 facture," — "an arbitrary, chance selection of one of 
 many well known shapes all equally well adapted 
 
186 COMMENTS ON THE LAW 
 
 to the purpose " — from the selection of which no 
 advantage was derived, except the incidental use as a 
 trade mark, thereby saying, inferehtially, that if some 
 other advantage had been derived from the selection 
 of the patented shape, it might have had some bearing 
 on the validity of the patent, and intimating that the 
 utility of the patented shape could be taken into 
 consideration. 
 
 In the matter of the application of Jason Crane, 
 for a design patent upon a fur set box, C D., April 20, 
 1869, p. 7, Commissioner Foote decided squarely that 
 utility may form the basis for the grant of a design 
 patent. He says "The construction which has been 
 given to that act (the act of Aug. 29, 1842) by the 
 office, ever since its passage in 1842, is that it relates 
 to designs for ornament merely; something of an 
 artistic character, as contradistinguished to those of 
 convenience or utility." He proceeds, "considerable 
 reflection upon the subject has satisfied me that the 
 objects and intent of the statute extend beyond the 
 limit assigned to it by the office." "I am unable to 
 perceive any good reasons why designs for utility are 
 not fairly and properly embraced within the statute, 
 as well as those relating to ornamentation merely." 
 " Whenever there shall be produced by the exercise of 
 industry, genius, eiforts and expense, any new and 
 original design, form, configuration, or arrangement of 
 a manufactured article, it comes within the provisions 
 and objects of the act creating design patents, what- 
 ever be its nature, and whether made for ornament 
 merely, or intended to promote convenience and utility."- 
 
 Acting Commissioner Hodges, in the case of B. L. 
 Solomon, C. D., Aug. 17, 1869, p. 49, quotes the 
 
PATENTABLE SUBJECT-MATTER. , l87 
 
 words of the case last cited, and follows it as an 
 authority ; the utility of an article bearing a patented 
 design was taken into account in considering the 
 propriety of extending the patent for the design. 
 
 Commissioner Fisher, in the case of W. N. Bartholo- 
 mew, C. R, Dec. 2, 1869, p. 103, states that it has 
 been the practice of the office to grant design patents 
 for useful forms, as well as for those of artistic ex- 
 cellence, that " the class of cases named in the act, as 
 arising from 'new shape or configuration,' includes 
 within it all those new changes of form which involve 
 increase of utility," and that " where the sole utility 
 of the new device arises from its new shape or con- 
 figuration, * * it may fairly be included among the 
 subjects which the act of 1842 was designed to 
 protect." 
 
 In the case of the Gorham Mfg. Co. v. White, 7 
 Blatch. 513, N. Y. 1870, the learned judge says, " a 
 design for a configuration of an article of manufactul'e 
 is embraced within the statute as a patentable design," 
 and "the object * * * may solely be increased utility." 
 
 In the case of E. K Fenno, C. D., February 27, 
 1871, p. 52, Acting Commissioner Duncan says that in 
 the statute relating to design patents . there is " no 
 limitation as to the use to which the article, wrought 
 into the particular shape designed for it, is to be sub- 
 jected; and no suggestion that mere beauty of form, 
 or ornamental configuration, are the ends sought, and 
 that 'the language' — of the statute — 'expressly im- 
 plies that utility may be the sole object had in view 
 in the invention or selection of the particular form to 
 be impressed upon the manufacture.' " 
 
 At this time, the judges of the Circuit Courts, and 
 
188 ^ COMMENTS ON THE LAW. 
 
 two commigsioners of patents, had held that utility 
 might form the basis of a design patent, and the doc- 
 trine seemed pretty well settled by construction, but at 
 this juncture the case of the Gorham Mfg. Co. v. 
 White came- before the U. S. Supreme Court on ap- 
 peal, and the court said, " the acts of Congress which 
 authorize the grant of patents for designs were plainly 
 intended to give encouragement to the decorative arts. 
 They contemplate not so much utility as appearance," 
 thus completely reversing the decision of the court 
 below, and finally determining that the utility of a 
 thing has no bearing upon its patentability under the 
 design patent act. 
 
 In the case of P. C. Parkinson, C. D., September 
 25, 1871, p. 251, Commissioner of Patents Leggett 
 fully coincides with the decision of the Supreme Court. 
 He says, "the law authorizing design patents was in- 
 tended to provide for an entirely different class of in- 
 ventions " — from those properly covered by machine 
 or functional patents — " inventions in the field of 
 aesthetics, taste, beauty, ornament ; " and that " by 
 ' article of manufacture,' as used in this section " — of 
 the design patent law — "the legislature evidently 
 meant only .ornamental articles, articles used simply 
 for decoration." 
 
 This construction of the law was followed by Act- 
 ing Commissioner Duncan, in the case of W, Whyte, 
 C. D., November 28, 1871, p. 304; by Acting Com- 
 missioner Thatcher, in the case of T. B. Doolittle, 2 
 Of Gaz. 275, July 31, 1872 ; by Commissioner Leggett, 
 in the case of T. B. Oglesby, 3 Of. Gaz. 211, February 
 24, 1873; and by Acting Commissioner Thatcher, in 
 the case of L. W. Fairchild, 3 Of. Gaz. 823, March 12, 
 
PATENTABLE SUBJECT-MATTER. 189 
 
 1873, comprising all the cases to date, so tBat it may 
 now be taken as settled and determined that only 
 those things which are intended to give an ornamental 
 or pleasing appearance to the objects specified in the 
 design patent act, are patentable as designs ; and that 
 the utility of a thing has no bearing on the patent- 
 ability of any design it bears or embodies. 
 
 Materials and Mode of Constbfction. — In the 
 case of W. K Bartholomew, C. D., December 2, 1869, 
 p. 103, Commissioner Fisher decides that " these pat- 
 ents are granted solely for new shapes or forms, and 
 the form being new it is immaterial by what process 
 that form is attained. The composition of matter or 
 the mode of construction is neither ' design,' ' shape,' 
 nor ' configuration,' and must be protected, if at all, 
 under a patent of another kind ; " and in the case of 
 G. H. Sellers, 0. D., June 8, 18T0, p. 58, he decides 
 that " a new shape or configuration is independent of 
 materials or modes of manufacture. If the shape be 
 old as applied to the thing, it can not avail that the 
 thing is produced by a new process or wrought in a 
 different material." 
 
 Commissioner Leggett decides the same in the case 
 of W. L. Tyler, C. D., April 27, 1871, p. 106. The 
 U. S. Supreme Court, in the case of the Gorham Mfg. 
 Co. V. White, says, " it is the appearance itself, * no 
 matter by what agency caused, that constitutes mainly, 
 if not entirely, the contribution to the public which 
 the law deems worthy of recompense," and this is, 
 beyond question, the true doctrine. 
 
 Trade Maeks.— In the case of Wm. King, C. D., 
 September 19, 1870, p. 109, Commissioner Fisher decides 
 
190 COMMEirrS ON THE LAW. 
 
 that tKe provisions of section 77 of tlie act of July 8, 
 1870, " by prescribing the statutory mode of obtaining 
 protection for a trade mark, excludes all other modes 
 not expressly provided for, and operates as a construc- 
 tion of section 71, in excluding trade marks from the 
 list of subjects intended to be protected as designs." 
 
 Commissioner Leggett, in the case of P. Weinberg, 
 C. D., September 6, 1871, p. 244, decides that " the 
 law never was intended to give a man a design patent 
 to serve merely the purpose of a trade mark," and in 
 the case of W. Whyte, C. D., November 28, 1871, p. 
 304, that designs " were not intended to subserve a 
 merely temporary purpose, such, for instance, as to 
 distinguish the article by their presence upon it, until 
 it should have passed into the hands of the consumer." 
 
 The construction of the law presented in these de- 
 cisions is in entire accord with the decision of the Su- 
 preme Court in the case of the Grorham Mfg. Co. v. 
 White, which says that the design patent acts " were 
 plainly intended to give encouragement to the decora- 
 tive arts," that " they contemplate not so much utility 
 as appearance, and that not as an abstract impression, 
 or picture, but an aspect given to those objects men- 
 tioned in the acts," thus saying that the design must 
 be a permanent part of the article bearing it, and not 
 intended to serve a useful purpose, as is the purpose 
 of a trade mark, but solely to give the article an orna- 
 mental and pleasing appearance. 
 
CHAPTER III. 
 
 QUALITIES OF PATENTABLE DESIGNS. 
 
 The act of July 8, 1870, reads "That any person 
 who, by his own industry, genius, efforts, and expense, 
 has invented or produced any new and original design," 
 &c., " may obtain a patent therefor ; " and the require- 
 ments in this regard are the same in the acts of 1842 
 and 1861, thus requiring that any design, in order to 
 be patentable, must be the result of industry, genius, 
 efforts, and expense. With regard to the meaning of 
 " industry," " efforts," and " expense " in this connec- 
 tion, no question is likely to arise ; but with regard to 
 'the meaning, here, of the word " genius " a question 
 has arisen already, or is, at least, suggested by the re- 
 ported cases. In the former practice of the Patent 
 Office, little or no regard was paid to the meaning and 
 requirements of the word in this connection. 
 
 It seems to have been taken for granted that the 
 use of the word " produce " in the text indicated that 
 a very low or inferior kind of originality is all that is 
 required to support a design patent. Although the 
 language of the learned judge in the case of Wooster 
 V. Crane, 2 Fish, P. C, 683, is not decisive upon this 
 point, he not being called upon by the circumstances 
 of the case to make it so, it yet seems to recognize a 
 low degree of originality as sufficient to support a 
 design patent. He said : " The act (of March 2, 1861), 
 although it does not require utility in order to secure 
 
1 92 COMMENTS ON THE LAW. 
 
 the benefit of its provisions, does require tliat the shape 
 produced shall be the result of industry, effort, genius, 
 or (and) expense, and must * * * be held to re- 
 quire that the shape or configuration sought to be 
 secured shall, at least, be new and original as applied 
 to articles of manufacture," thereby intiojating that if 
 the shape had been new simply as applied to a man- 
 ufacture, though old otherwise, that would have 
 been sufficient to support the patent. This was long 
 the adopted and recognized doctrine and practice of 
 the Patent Office, but in the case of P. Weinberg, C. 
 D., Sept. 6, 1871, p. 244, Commissioner Leggett took 
 advanced ground in the exactly opposite derection. He 
 said, " a prerequisite for a patent of any kind is an 
 exercise of inventive genius. This is no less true of 
 design than of functional patents." That the word 
 " produced " as used in the statute relating to design 
 patents was not intended to permit the grant of design 
 patents " without evidence of the exercise of inventive 
 genius, * * * nor was it intended in any way to 
 let down the standard for grant of patents." " ' In- 
 vented or produced,' as used in this section of the law, 
 means the exercise of a higher faculty than would 
 have been indicated by * invented ' alone." " In mech- 
 anism, an exercise of constructive genius may, per- 
 haps, be sufficient to obtain a patent, but a design 
 patent presupposes an exercise of creative genius. 
 Original thought is demanded, a new idea must be 
 begotten and embodied." In the case of P. C. Parkinson, 
 C. D., Sept. 25, 1871, p. 251, he says, " creative genius 
 is demanded in giving existence to a new and original 
 design." 
 
 It seems to the present writer that the reason for 
 introducing the words " produced " and " genius " into 
 
QUALITIES OF PATENTABLE DESIGNS. 193 
 
 the wording of the act can be made clear by a very 
 simple experiment. Omit the words " or produced," 
 and the act reads " That any person who, by his own 
 industry, genius, efforts, and expense, has invented * 
 * any new and original design for a manufacture, bust, 
 statue, alto-relievo, or bas-relief," &c. It is at once 
 apparent that it is not customary or correct to sj)eak of 
 a, bust, statue, alto or bas-relief, or of some of the 
 other things specified, as inventions or as things " in- 
 vented." So that the use of "produced" or its 
 synonym becomes necessary in this connection. Now, 
 leaving in the words "or produced," omit the word 
 " genius," and it will be percieved that the wording 
 would cover and protect a low order of originality, 
 much lower thau is required by the law relating to 
 functional joatents, and as the draftsman of the design 
 patent act wrote Avith the functional patent act before 
 him as a guide. So far as it might be, there is no reason 
 to suppose that he intended to alter, in the least, the 
 standard of originality required ; but it is reasonable 
 to assume that he introduced the word " produced " in 
 order to correctly designate the originating of busts, 
 statues, tfec, and that he introduced the word " genius " 
 to indicate that the same degree of originality would 
 be required to support a design patent as to support 
 a functional patent, it being plain that the exercise of 
 genius is required to support the latter. 
 
 The former practice of the Patent Office was, that 
 a much lower order of originality would support a 
 design than a functional patent, and the decision in 
 
 . Wooster v. Crane seems to hold to the same view, 
 while the quoted decisions of Commissioner Leggett 
 
 take the ground that design patents require a higher 
 
 13 
 
IM QUALITIES OF PATENTABLE DESIGNS. 
 
 order of originality than functional patents. If the 
 explanation herein put forth is every way reasonable, 
 neither of these views is correct, but the same degree 
 of originality is required in both design and functional 
 patents. 
 
 Double Use. — It was the former practice of the 
 Patent Office, and a practice seemingly sustained by 
 the case of Wooster v. Crane, to grant design patents 
 for old shapes which were only ne-w as applied to 
 articles of manufacture, as if, for instance, a person had 
 taken a statue of a shepherd boy, and applied it 
 to the j)urposes of a drop light, having the gas issue 
 from a pipe held in the hand of the boy. This would 
 be known under the functional patent act as simply 
 a double use, the mere application of an old device to 
 a new purpose, and clearly unpatentable because it 
 involves the exercise of no genius, but is simply 
 ordinary mechanical adaptation. If such a new ap- 
 plication of' an existing thing does not involve genius 
 enough to support a functional patent, neither does 
 it involve genius enough to support a design patent. 
 No good reason can be seen, why the doctrine of 
 double use is not as applicable to design as to functional 
 patents. A patentable design must, in itself, be new, 
 not merely a new application of an old shape ; mere 
 taste and judgment in the selection of existing forms 
 can hardly be held to be an exercise of genius. 
 
 The Test of Genius. — As no tribunal has pointed 
 out what is to be taken as evidence of the exercise 
 of genius in the production of a design, it will profit 
 but little to speculate upon a matter which is so 
 evidently difficult of reduction to exact rules, but 
 there are some principles relating to functional patents 
 
QUALITIES OF PATENTABLE DESIGNS. 195 
 
 wHcli may possibly be analogous here. Utility is 
 tlie chief end of a functional invention, but tlie caises 
 are very clear that any degree of utility, however 
 slight, will — other questions aside — support a func- 
 tional patent. The Supreme Court decides in the case 
 of the Gorham Mfg. Co. v. White, that " pleasing- 
 appearance " is the chief end of patentable designs^ 
 so that utility in functional patents seems to stand in 
 the same place as appearance in design patents. It 
 would seem, therefore, that if a design is — 1st. Sub- 
 stantially unlike any previous design ; 2d. Not ab- 
 solutely frivolous in its character; and 3d. Gives- 
 pleasing appearance in any degree, that sufficient 
 evidence of the exercise of genius is shown to support 
 a patent for it. 
 
CHAPTER IV. 
 
 THE CLAIM. 
 
 The common formula for a claim in a design patent 
 is " I claim as my invention : The design for * * * 
 substantially as shown and described," the claim being 
 to the thing as a whole without any specific reference 
 to the features composing the design, and the design 
 patents are very few in number which contain as a 
 claim more than the above formula. It is believed 
 that this practice has arisen from the belief that this 
 is the only proper claim to be made in a design ]Datent. 
 In the application of Isaac A. Sheppard for letters 
 patent for a design for a stove ornament, Com. Dec. 
 1870, p. 22, the question was raised whether features of 
 a design can be claimed singly and as combined into 
 a whole, in the same patent. Commissioner Fisher 
 said : " There is no provision in, or fair construction of, 
 the act relating to letters patent for designs, which for- 
 bids the union of two or more claims or clauses of 
 claims in the same patent." "There has been no 
 uniform practice to the contrary by the Patent Office." 
 ^' If the design contains features which are new, singly 
 and in combination, no reason is known ^' * why 
 they may not be so claimed." 
 
 It so happens that this very question was decided 
 in the very first design patent cause that came before 
 a court. In the case of Eoot v. Ball, 4 McLean, IV 7 
 
THE CLAIM. 19T 
 
 (1846), the learned judge held that " the same (design) 
 patent may include a patent for a combination, and aa 
 invention of some of the parts of which the combina- 
 tion consists." 
 
 As it is common, and always has been, to grant 
 two or more clauses of claim, in functional patents^ 
 upon precisely the same kind of wording in the law, 
 it is not readily seen how such a question could ever 
 have been raised. Where a design contains features 
 which are separate and distinct from the other features,, 
 there seems to be no good reason why a claim may 
 not be made to each of such features. Suppose a de- 
 sign for the ornamentation of the surface of a circular 
 plate to consist of three features, radial rays at the 
 centre, a wreath of flowers outside of this, and orna- 
 mental serrations at the periphery. It would seem ab- 
 surd to compel the producer to take a patent for the 
 design as a whole, thus permitting any one so disposed 
 to use any two of these three features with impunity. 
 
 In the case of the Gorham Mfg. Co. v. White, the 
 decision of the Supreme Court contains some para- 
 graphs which seem, at the first glance, to militate 
 against the allowance of more than one clause of claim. 
 The learned judges say: "To speak of the invention 
 as a combination or process, or to treat it as such, is 
 to overlook its peculiarities. As the acts of Congress 
 embrace only designs apj)lied or to be apj)lied, they 
 must refer to finished products of invention rather 
 than to the process of finishing them, or to the agencies 
 by which they are developed. A patent for a pro- 
 duct is a distinct thing from a patent for the elements 
 entering into it, or for the ingredients of which it is 
 composed, or for the combination which causes it." 
 
198 THE CLAIM. 
 
 Upon examining the decision of the court below it will 
 be seen that this language has no relation whatever to 
 the question of whether a design patent may have one 
 or more claims, but is used solely for the purpose of 
 Begativing the idea advanced by the judge below to 
 the effect that a patent for a design is in effect a patent 
 for the agencies used to cause an appearance and not 
 for the appearance itself. 
 
 It will thus be seen that the courts and the Patent 
 Office are both committed to the doctrine of allowing 
 claims to specific features of a design, both singly and 
 in combination. 
 
 Broad Claims, — In the case of W. N. Bartholo- 
 "mew, Com. Dec. 1869, p. 10, Commissioner Fisher 
 «aid : " I can see no reason, under the law, why designs 
 may not be generic, why what are called ' broad 
 claims ' may not be made to them, and why the doc- 
 trine of artistic or aesthetic equivalents may not be 
 applied to them." "A'valid patent may be granted 
 for a new genus or class of ornaments as well as for 
 specific ornaments." In the case of the Gorham Mfg. 
 -Go. V. White, the Supreme Court defined two designs 
 to be identical, when an ordinary observer, giving ordi- 
 nary observation, would be likely to mistake one for 
 the other. This definition gives a generic effect to 
 some claims, whether generic in terms or not ; for in- 
 stance, if a patent were taken for a button with five 
 radial rays, this would clearly cover a design having 
 a greater or less number of rays, unless the disparity 
 was made extraordinary in some way, for an ordinary 
 observer giving ordinary attention to a button would 
 not be apt to notice whether the number of rays was 
 more or less. It is clear, from this decision of the 
 
THE CLAIM. 199 
 
 Supreme Court, that a claim cannot be legally so 
 generic in its terms as to cover a design whicli an or- 
 dinary observer, giving ordinary attention, would not 
 be likely to mistake for tke design shown in the 
 patent. As the law gives a claim, by construction, to 
 all the generic effect it can have, it would seem not ad- 
 visable to attempt the general introduction of generic 
 claims into design patents. 
 
CHAPTER V. 
 
 IDENTITY AND INFRINGEMENT. 
 
 In tlie first reported patent cause, the case of Root 
 V. Ball, 4 McLean, 177 (1846), the learned judge had 
 occasion to decide what constitutes patentable identity 
 of designs, and what constitutes infringement of a 
 patented design. He said that it is not necessary, in 
 order to constitute infringement, " that the thing pat- 
 ented should be adojDted in every particular, but if, as 
 in the present case, the design and figures were sub- 
 stantially adoj)ted by the defendants, they have in- 
 fringed the plaintiff 's right." " It is an infringement 
 to adopt the design so as to produce substantially the 
 same appearance." 
 
 At the trial of the case of the Grorham Mfg. Co. v. 
 White, in the Circuit Court, the learned judge took 
 entirely different ground. He treated the several de- 
 signs, for handles of spoons and forks, in analyzing 
 and comparing them, as comj)osed, each — in general 
 terms — of a combination of two elements, to wit: 
 1st. The outline of the handle, and 2d. the ornamenta- 
 tion on the handle. He finding the outlines of two of 
 the handles to be substantially the same, but the orna- 
 mentation different, in minor particulars, held the two 
 designs not to be substantially identical. He held 
 that the eye of an ordinary or casual observer is not a 
 proper test as to the substantial identity of designs. 
 
IDENTITY AND INFRINGEMENT. 201 
 
 upon diiferent articles, that " the same principles which 
 govern in determining the question of infringement in 
 respect to a patent for an invention connected with the 
 operation of machinery, must govern in determining 
 the question of infringement in respect to a patent for 
 a design," that the only test of the substantial identity 
 of designs on different articles " is the observation of 
 a person versed in the business of designs in the par- 
 ticular trade in question — of a person engaged in the 
 manufacture or sale of articles containing such designs 
 — of a person accustomed to compare such designs one 
 with another, and who sees and examines the articles 
 containing them side by side," that " a patent for a 
 design, like a patent for an improvement in machinery, 
 must be for the means of producing a certain result or 
 appearance, and not for the result or appearance itself," 
 and that, " even if the same appearance is produced 
 by another design, if the means used in such other 
 design to produce the appearance, are substantially dif- 
 ferent from the means used in the prior patented de- 
 sign to produce such appearance, the later design is 
 not an infringement of the patented one." 
 
 When this same case came before the Supreme 
 Court on ajDpeal, the court took the same ground as 
 was taken in the case of Root v. Ball, and reversed 
 the ruling of the judge below upon every point of law 
 laid down. The court said, "the thing invented or 
 produced for which a patent is given, is that which 
 gives a peculiar or distinctive appearance to the manu- 
 facture or article to which it may be applied, or to 
 which it gives form." " It is the appearance itself, * 
 no matter by what agency caused, that constitutes 
 mainly, if not entirely, the contribution to the public 
 
202 IDENTITY AND INFRINGEMENT. 
 
 whicli the law deems 'wortliy of recompense." " To 
 speak of the invention as a combination or process, or 
 to treat it as such, is to overlook its peculiarities." 
 " The controlling consideration is the resultant effect." 
 " The true test of identity of design * * must be 
 sameness of appearance, and mere difference of lines 
 in the drawing or sketch, a greater or smaller number of 
 lines, or slight variances in configuration, if insufficient 
 to change the effect upon the eye, will not destroy the 
 substantial identity." " Experts * are not the per- 
 sons to be deceived." " If in the eye of an ordinary 
 observer, giving such attention as a j)urchaser usually 
 gives, two designs are substantially the same — if the 
 resemblance is such as to deceive such an observer, 
 inducing him to purchase one, supposing it to be the 
 other — the first one patented is infringed by the other." 
 This discussion of this question by the highest 
 tribunal in the land is so full as to leave nothing to be 
 said ; there is, however, a minor matter connected Avith 
 this subject which deserves some consideration. 
 
 Teibutaey oe Impeoved Designs. — It is well 
 known that it is customary to grant patents for func- 
 tional devices which are mere improvements upon ex- 
 isting devices, such patents being often tributary to 
 other and prior patents. 
 
 In the case of W. N. Bartholomew, Com. Dec. 
 1869, p. 103, Commissioner Fisher seemingly takes 
 the ground that the same thing can be done in de- 
 sign patents. He says, " a valid patent may be granted 
 for a new genus or class of ornaments as well as for 
 specific ornaments, though * * * every species, 
 variety, and individual, having distinct characteristics, 
 under such a genus, might also be patented, the patent 
 
IDENTITY AND INFRINGEMENT. 203 
 
 being subordinate and tributary to tliat which covered 
 the class." 
 
 It is readily apparent that an existing design might 
 be so improved upon as to add greatly to its beaiuty, 
 and yet the so improved design not be substantially 
 .unlike the original, as the alteration of a single line 
 sometimes makes all the difference betvpeen an esthetic 
 fault and perfect symmetry, but in view of the decision 
 of the Supreme Court in the case of the Grorham Mfg. 
 Co. V. White, it is tolerably clear that unless the im- 
 provement were carried so far as to make the improved 
 design substantially unlike the original, it would not 
 be patentable. 
 
 There is a reason for this in the law. The act 
 relating to functional patents (sec. 24) reads : " That 
 any person who has invented or discovered any new 
 and useful art, machine, manufacture, or composition 
 of matter, or any new and useful improvement thereon, 
 &c., may obtain a patent therefor," thereby expressly 
 allowing patents for improvements on existing devices, 
 while the design patent act only allows a patent for 
 " any new and original design," saying nothing about 
 " improvements thereon," so that both the text of the 
 law and the construction of the court point to the con- 
 clusion that a design j)atent can not be allowed for 
 a design which is tributary to another, or a mere im- 
 provement thereon, and not in substance unlike it. 
 
CHAPTER VI. 
 
 PRIOR USE. 
 
 In the case of Stuart & Bridge, Com. Dec. 1870, 
 p. 15, Commissioner Fisher said, with reference to 
 design patents, that '"no provision is made for use or 
 sale of the invention prior to the application, as in the 
 case of other inventions." " The design must not have 
 been known or used by others prior to the application 
 of the inventor." " If the design be described in a 
 prior patent granted either to himself or others, it is 
 known to others within the meaning of the law. An 
 invention of a design, if shown in a patent for a 
 mechanical invention, is lost, and cannot be included 
 in a subsequent application and patent for a design." 
 
 In the case of Alois Kohler, 4 Of Graz. 58, Com- 
 missioner Leggett denied a patent for a design shown 
 in a prior mechanical patent granted to the same 
 applicant. His reason does not appear to be the same 
 as given by Commissioner Fisher just cited ; he says 
 " the design patent might have been first granted, and 
 afterward the mechanical, but not vice versa, for the 
 mechanical is the greater and must include the right 
 to use the design shown, "•■ * -* but the design is the 
 less and does not necessarily include the mechanism." 
 Although the remark is not exactly pertinent to the 
 subject under consideration, it may be said, just here, 
 that the language of Commissioner Leggett, just quoted, 
 
PRIOR USE. 205 
 
 reads rather curiously by the side of his language, 
 in the case of P. Weinberg, Com. Dec. 1871, p. 244, 
 where he says " in mechanism, , an exercise of con- 
 structive genius may, perhaps be sufficient to obtain a 
 patent, but a design patent presupposes an exercise of 
 creative genius." 
 
 It so happens that two different courts have had 
 occasion to decide whether design patents are entitled 
 to two years' public use prior to application, as are 
 •other patents, and both courts have held that they are. 
 In the case of Root v. Ball, 4 McLean, 177, which 
 was an action upon a design patent, the court held 
 that a plea that the design was in use or on sale 
 before the application for the patent is demurrable, 
 unless the plea aver an abandonment, or that such use 
 or sale was for- more than two years before the applica- 
 tion for — under section 7 of the act of March 3, 1839 — 
 such use or sale must have preceded the application 
 more than two years in order to invalidate the patent. 
 And in Booth v. Garelly, 1 Blatch. 247, the court held 
 the 7th section of the act of March 3, 1839, allowing 
 two years' public use prior to the application, applica- 
 ble to design patents. The act of 1839, just referred 
 to, was passed three years prior to the first act, creating 
 design patents, and refers directly to the act permitting 
 the grant of functional patents. If the act of 1839 
 was applicable to the act of 1842, the equivalent 
 sections of the acts since passed are certainly aj)plica- 
 ble each to the other, and design patents must be 
 held entitled to two years prior use, the same as other 
 patents. 
 
 Apropos of these constructions by courts, it may 
 be remarked that they plainly foreshadow what the 
 
206 PRIOR USE. 
 
 action of a court will be, if the question as to whetlier a 
 design patent can be reissued, or whetlier a disclaimer 
 can be made thereto, is ever brought before it ; and these 
 constructions point to the conclusion that every pro- 
 vision of the general patent act of 1870, not incon- 
 sistent with the sections distinctively applicable to 
 designs, is applicable to design patents. 
 
CHAPTER VIL 
 
 EXTENSION. 
 
 The first act authorizing design patents, approved 
 August 29, 1842, made no provision for their extension 
 beyond their original terms. The act of March 2 
 1861, made design patents thereafter granted extensible 
 upon the same terms and under the same conditions 
 as other patents. 
 
 The act of July 8, 1870, made design patents granted 
 prior to March 2, 1861, extensible the same as other 
 patents; it made no provision for the extension of 
 any patents whatever thereafter granted ; it repealed 
 both the former acts, but contained a savins: clause 
 vpith reference to rights existing under former acts 
 which, so far as it relates to the extensibility of design 
 patents issued between March 2, 1861, and July 8,, 
 1870, has received a construction by the Patent Office, 
 in the case of E. W, Sperry, C. D. 1870, p. 139. The 
 acting commissioner decides squarely that since the 
 passage of the act of July 8, 1870, the commissioner 
 has no power to extend patents for designs issued since 
 March 2, 1861, and that the fact that an application 
 for such an extension was filed before the passage 
 of the act of 1870 makes no difference dn this re2;ard. 
 
 "D"- 
 
 He says : " The commissioner's sole authority for extending 
 patents is derived from positive legislative enactment, and in the 
 exercise of this power he is bound to restrict his action to the exact 
 limits established by the statute. The only parts of the new law 
 
208 EXTENSION. 
 
 relating in terms to this subject are the sections (63 to 67 inclusive), 
 which provide for the extension of patents for inventions or dis- 
 coVeries, and section 74 which enacts that ' patentees of designs 
 issued prior to March 2, 1861, shall be entitled to extension of their 
 respective patents for the term of seven years, in the same manner 
 and under the same restrictions as are provided for the extension of 
 patents for inventions or discoveries issued prior to the 2d day of 
 March, 1861.' 
 
 "The patents now offered for extension, being patents for designs 
 issued since the 2d day of March, 1861, do not come under either 
 ■of these provisions, and consequently the commissioner has no 
 power in the premises, unless by reason of the fact that the appli- 
 cations were filed prior to the passage of the present law, ' applicant 
 thereby acquired rights which are preserved to him by the repealing 
 section of the law.' 
 
 "The patent act of 1861 (section 11) gave the commissioner 
 power to extend design patents. The repealing section of the act 
 of July 8, 1870, contains the proviso that the repeal of the existing 
 laws relating to patents ' shall not affect, impair, or take away any 
 right existing under any of said laws.' The rights here referred to 
 would seem to be such rights only as may form the basis of a suit 
 at law or in equity, the further language of the proviso being as 
 follows : ' but all actions and causes of action, both in law and in 
 equity, which have arisen under any of said laws, may be com- 
 menced apd prosecuted, and if already commenced, may be prose- 
 cuted to final judgment and execution, in the same manner as though 
 this act had not been passed.' Manifestly the rights here con- 
 templated can have no relation to the right of an applicant for an 
 extension to have his case examined and acted upon by the Com- 
 missioner of Patents. This right, as existing in cases pending at the 
 time of the passage of the new law, does not appear to have been 
 preserved by the proviso quoted." 
 
 There is room for serious doubt as to the correct- 
 ness of this decision. The acting commissioner seems 
 to have entirely overlooked the fundamental nature 
 of a patent, and not to have applied the ordinary and 
 received rules of construction to the saving clause in 
 the repealing section of the act of 1870. 
 
EXTENSION. 209 
 
 The sections of the law of 1870, referred to by the' 
 acting commissioner, "63 to 67 inclusive," and "sec- 
 tion 74," have no direct application to the subject 
 under discussion, for the former do not refer to design 
 patents at all, and the latter refers expressly to design 
 patents issued prior to March 2, 1861. 
 
 The parts of the law which have direct application 
 to the subject are the latter part of section 11 of the 
 act approved March 2, 1861, which provides "that the 
 patentees of designs under this act shall be entitled to 
 the extension of their respective patents, <fec.," and 
 section 111 of the act of July 8, 1870, which reads as 
 follows : 
 
 " Section 111. And be it further enacted, That the acts and parts 
 of acts set forth in the schedule of acts cited, hereto annexed, are 
 hereby repealed, without reviving any acts or parts of acts repealed 
 by any of said acts, or by any clause or provision therein : Pro- 
 vided, however, That the repeal hereby enacted shall not affect, 
 
 IMPAIR, OR TAKE AWAY ANT RIGHT EXISTING UNDER ANT OF SAID 
 
 LAWS ; but all actions and causes of action, both in law and in equity, 
 which have arisen under any of said laws, may be commenced and 
 prosecuted, and if already commenced, may be prosecuted to final 
 judgment, &c. 
 
 Schedule, «Sic. 
 ********* 
 
 Act of March 2, 1861." 
 
 Attention is called to the words made purposely 
 prominent by being put in small capitals. It will be 
 observed that, although, among others, the act of 
 March 2, 1861, is repealed, yet that any right existing 
 under it is preserved. The right to the extension of 
 a design patent, granted under that act, is one of the 
 rights so preserved, and it is not probable that a per- 
 son unfamiliar with the artificial methods of legal 
 14 
 
210 EXTENSION. 
 
 reasoning sometimes employed in such matters would 
 think of asserting to the contrary. 
 
 The then acting commissioner concludes, however, 
 that because this saving clause is connected by the 
 word " but" to the words " all actions and causes of 
 action, both in law and in equity, &c.," that, therefore, 
 this saving relates to " such rights only as may form 
 the basis of a suit at law or in equity." With reference 
 to this, it may be observed that the saving clause is 
 separated from " but" and its following words by a 
 semicolon, a slight circumstance perhaps, but showing 
 that there is no intimate connection intended between 
 the saving clause and but with its followers. It may 
 be further observed, that when the word "but" is 
 used as a connective in legal language, it does not 
 necessarily nor, it is believed, ordinarily have the same 
 meaning and significance that it has when used as a 
 connective in other kinds of composition, so that it 
 does not follow, from the use of the connective " but" 
 here, that the words following it are to be taken as 
 modifying and limiting the words preceding it. Still 
 further, the right to bring suit under a repealed law 
 is just the right that the draftsman of a new law would 
 not leave to be derived from the general words pre- 
 ceding the semicolon, but he would naturally go on 
 in the same connection to elaborate upon this particu- 
 lar right, just as is done in this case, and what more 
 natural than the use of the semicolon and the word 
 " but" between the general clause and the elaboration 
 of a single point under it. Again, this saving clause 
 is in the nature of a remedial statute, and hence should 
 be construed liberally , and it would seem to need but 
 little liberality of construction to make this saving 
 clause include the right of extension. 
 
EXTENSION. 211 
 
 There is an argument wMcli would seem to be 
 decisive of the whole question. The right to the pro- 
 tection of letters patent is not a natural right that is 
 pertaining to man in a state of nature, but it is a civil 
 right pertaining to man under the protection of a civil 
 government, and the law of March 2, 1861, is clearly 
 a law in the nature of a contract between the govern- 
 ment and the inventor. 
 
 The consideration moving from the inventor is the 
 production of the design and the compliance with 
 certain requisites of the law, such as paying a fee and 
 preparing and presenting the proper papers. The 
 consideration moving from the government is the 
 grant of an exclusive right to make, use, and vend the 
 design for a specified time, with the right, under con- 
 ditions, to a specified extension of such time. The 
 government says to the man, " If you will make an 
 invention, pay a certain fee, and prepare and present 
 certain papers, then the government will, in return, 
 grant you an exclusiv.e right with reference to such 
 invention, and, under conditions, will extend such 
 time for a specified term," thus making the right to 
 the extension an essential and integral part of the con- 
 tract and of the consideration moving from the govern- 
 ment. 
 
 " When a law is in the nature of a contract, and 
 when rights have vested under it, a repeal of the law 
 cannot divest those rights ; a party to a contract cannot 
 pronounce its own deed invalid, though that party 
 be a sovereign state." These are the words of a dis- 
 tinguished jurist, and cannot be gainsaid. The right 
 to extension vested in every patentee of a design, under 
 the act of March 2, 1861, as soon as his patent issued, 
 and he cannot be divested of that right, even though 
 
213 EXTENSION. 
 
 a subsequent act assume to do so in explicit terms, 
 whicli is by no means the case here. 
 
 It is not an answer to this argument to say that 
 " this theory may be correct, but the government has 
 repealed the law, there is no power competent to 
 coerce the government, the commissioner must obey 
 the law, and your wrong is one without remedy," for 
 the acting commissioner in deciding this case did not 
 follow a plain and straightforward statement of law 
 that left him no choice of action, but he arrived at 
 his conclusion by means of a technical and highly 
 artificial course of reasoning, when it was his duty, if 
 the matter was involved in any doubt, to resolve that 
 doubt in the way and manner that would leave the 
 government in the attitude of an honest party, fulfill- 
 ing its contract. This people and this government 
 recognize right and justice as rules of action for guid- 
 ance and governance, and it was the duty of the acting 
 commissioner, who wielded the powers of government 
 in this instance, to leave the government in the atti- 
 tude of performing its contract. 
 
 It is believed that another argument bearing upon 
 this matter is found in section 74 of the act of July 
 8, 1870, where Congress, in terms, makes design 
 patents granted prior to March 2, 1861, extensible 
 when they had not been so before. 
 
 Why was extensibility given to these early de- 
 sign patents, when they had it not before, except to 
 put them on an equal footing with those granted since 
 March 2d, 1861 ? Why take away extensibility from 
 these later patents, which was theirs of right, and 
 give it to the prior patents as a gratuity ? Why rob 
 Peter, not to pay Paul, but to make him a gift of the 
 theft ? If extensibility is a good thing, why take it 
 
EXTENSION. 213 
 
 away from the later patents I If a bad thing, why give 
 it to the prior ones ? To attempt to explain section 74, 
 except on the ground that it was intended to put the 
 earlier design patents upon the same footing as the 
 later ones, seems to involve an absurdity. 
 
 It would seem tolerably clear that Congress had 
 no right to take away extensibility from design 
 patents granted between March 2, 1861, and July 8, 
 1870; that they did not intend to do so, and that a 
 fair construction of the law will not sustain a refusal 
 to extend one of these patents. 
 
INDEX 
 
 DIGESTS AND TREATISE, 
 
 COURTS 
 
 Abandonment page 137 
 
 Application \.. 
 
 Claim 137 . 
 
 Claims, Beoad 
 
 Date of Patent 138 
 
 Double Use 
 
 Equivalbnts 
 
 Evidence 
 
 Extension 
 
 Fees 
 
 Genius, Test of 
 
 Identity 138 
 
 Infringement 138 
 
 Injunction 140 
 
 Interference 
 
 Inventor 141 
 
 Materials 
 
 Mode of Construction 
 
 Novelty 141 . 
 
 Particular Patents 142 
 
 Patentable Requisites 143 
 
 Patentable Subject-Matter 
 
 Practice, Courts 143 
 
 Practice, Patent Office 
 
 Prior Use 144 . 
 
 Qualities of Patentable Design. . . . 
 Reissue 
 
 PAT. OFF. 
 
 IBEATISE 
 
 149 
 
 
 149 ., 
 
 . . . 196 
 
 
 198 
 
 
 194 
 
 150 
 
 
 150 
 
 
 151 . 
 
 . . . 207 
 
 151 
 
 
 
 194 
 
 151 . 
 
 . . . 200 
 
 
 200 
 
 152 
 
 153 
 
 155 ,, 
 
 161 
 165 ., 
 
 165 
 
 189 
 189 
 
 182 
 
 205 
 191 
 
216 INDEX. 
 
 
 OOOBTS 
 
 PAT. OFF. 
 
 TREATISE 
 
 Statutes, History and Analysis of. 
 
 
 
 173 
 
 Act of Aug. 29, 1842 
 
 
 
 173 
 
 Analysis of 
 
 
 
 177 
 
 Act Mch. 2, 1861 
 
 
 
 174 
 
 Analysis of 
 
 
 
 178 
 
 Act of July 8, 1870 
 
 
 
 175 
 
 Analysis of 
 
 
 
 178 
 
 Term 
 
 
 166 
 
 
 Trade Marks 
 
 
 
 189 
 202 
 
 .. 184 
 
 Tributary Designs .... 
 
 Utiliity 
 
 145 .. 
 
 . . 166 . . 
 
KF 31^2 S59 
 
 Author Vol. 
 
 Simond, William Edgar 
 
 ™^ law of design patents con- <=°py 
 taining all reported decisions... 
 
 
 ...jj 
 
 Date 
 
 Borrower's Name 
 
 
 
 
 
 
 
 
 
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