26 App. D.C. 331 | D.C. Cir. | 1905
delivered the opinion of the Court:
The Commissioner of Patents refused to grant the appellant, William A. Schraubstadter, a design patent for his alleged improvements for a font of type, and from such decision this appeal was taken. The record discloses that his claim was fully considered by the various tribunals of the Patent'Office, and that his counsel most carefully and ably presented the arguments in favor of the patentable novelty of the design. Not only were the usual hearings had, but it appears that a rehearing was asked and granted.' It appears that in the decision of the Commissioner on the' rehearing certain alleged prior patents, not before referred to, were cited by the Commissioner, some of which do not belong to the prior art. These we have disregarded in the consideration of the appeal.
Some criticism is made in appellee’s brief that appellant has not shown or described the type themselves, but has only shown the kind of printed matter produced by the type. The answer to this is that appellant has furnished the conventional drawing accepted for years by the Patent Office, save that he has shown
As we view it, the real question before us is whether the claimed design, in view of the prior art, discloses patentable invention. In all cases where that question is presented to this court, or to the Federal courts in infringement suits, it is unwise to generalize, for the facts in each case must govern the conclusion reached, and often it is difficult to differentiate between patentable and nonpatentable invention. Where there is a serious •doubt left in the mind of this court, we believe that that doubt should be resolved in favor of the one seeking a patent, for, if his claim be denied, he has nothing with which he can go into court and attempt to enforce a lawful monopoly. We should, however, in reversing the concurrent decisions of the Patent Office, be convinced beyond a reasonable doubt that, in the absence of anything but what is shown by the record in the case before us, we would hold a patent granted on the application to be a valid one.
In the case at bar there is not left, after a careful examination of the record and of the briefs of counsel, any serious doubt as to the nonpatentability of the alleged design in view of the •disclosure of the prior art. To arrive at this conclusion it is unnecessary, in our opinion, to consider any of the prior patents save the design patents for fonts of type granted to Ihlen"burg, November 12, 1895, No. 24,896, and to MaeDonall, July 11, 1899, No. 31,215. We may and do freely admit the assertion of appellant’s counsel that there are differences between the designs, but these differences, to the average observer, are •small. To an expert they are undoubtedly greater, and it is probably true, as set forth in the affidavit of Mr. Nelson, that the type •sought to be protected by the appellant have individual peculiarities which would prevent them from being regarded by the printing trade as a substitute for the type of the patented designs. But such slight differences and peculiarities do not rise to the dignity
The conclusion of the court was that the novelty of a design was to be determined, and infringement decided, by the comparative appearance of the designs in the eyes of average observers, and was not to be determined by such appearance to the eyes of experts. The court said: “We hold, therefore, that 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.”
But, in determining the question of the patentability of the later design, it is not necessary to find that it infringes the earlier one in order to come to the conclusion that the later one lacks patentability, for invention is required in the production of a patentable design. Smith v. Whitman Saddle Co. 148 U. S. 674, 37 L. ed. 606, 13 Sup. Ct. Rep. 768. In Northrup v. Adams, 12 Off. Graz. 430, Mr. Justice Brown, then District Judge for the Eastern District of Michigan, in stating that the
Where, in cases like the one now before us, we arrive at the same conclusion as have the various tribunals of the Patent Office, it serves no good purpose to elaborate the same reasons and restate the same facts. It is sufficient to set forth that we agree with them in their conclusion that the alleged invention is not deemed worthy of protection by patent. This is doubly so when we arrive at the same conclusion for reasons substantially the same as those advanced by them. Suffice it to say that we agree with the Commissioner that, “aside from the waved outline, the applicant’s letters seem to be of a very ordinary style.” To add this old waved outline to common forms of letters does not, we believe, amount to invention. Given the prior Ihlenburg and MacDonall patented designs it did not require the exercise of the inventive faculty to produce appellant’s design.
On the consideration of this appeal we have not lost sight of appellant’s contention that it is impracticable for the Patent Office tribunals to pass judgment on esthetic values. We need not take issue with him upon the statement that “the proper esthetic estimation of a new type design, therefore, requires taste, the sense of the beautiful not in its merely natural state but highly cultivated and developed in delicacy and correctness under the guidance of reason.” The answer to this is that Congress, in enacting the patent statutes, relating as well to designs as to mechanisms, was not establishing a school of fine arts, and did not provide for juries of artists, or artistic experts, to pass upon the questions of originality and invention. It was a condition, and not a theory, that confronted Congress; and the courts, in construing design patents, both in reference to invention and infringement, have not adopted the high standard which appellant insists to be the proper one in determining whether the design produces a new and pleasing impression on the esthetic sense. The eye to which the design is to appeal is that of the ordinary man, and not the eye of the artist. We may deplore the fact
