The decision of the Board of Appeals recognized that appellant's molding operation is not the same as in the cited patents but stated the claims did not bring out this difference. Specifically the character of the work pieces and their relative positions were deemed not properly described.

Accordingly after the Board's decision and the appointment of new counsel an attempt was made by petition (a) to have the Board make specific recommendations as to acceptable amendments to the claims or (b) to have the Primary Examiner directed to enter and favorably act on a proposed amendment drafted to present the claims in allowable form.

Before the Commissioner acted, the time for filing notice of appeal to the Court arrived. On receipt of this notice the Patent Office decided that it had lost jurisdiction to act on the petition.2

Appellant's sixth reason of appeal reads:

The Board erred in refusing to state explicitly that the said claims may be allowed, if amended as proposed by the amendment offered July 19, 1950. And the brief on appellant's behalf asserts:

It is submitted that the power of the Court to revise the decision of the Board of Appeals is ample authority to include in its decision a consideration of the merits of the appealed claims when amended as proposed.

[5] We do not think the board erred "in refusing to state explicitly that the said claims may be allowed, if amended as proposed by the amendment offered July 19, 1950."

There is no evidence that the proposed amendments to the claims were in fact ever seen by the board. No motion for reconsideration by the board of its decision affirming that of the examiner was presented. That would seem to have been a primary requisite for securing any action relative to the proposed amended claims. Furthermore no request for an extension of time within which to file a request for reconsideration was made.

It may not be held properly that a tribunal erred in not acting on claims which are not shown to have been before it at a time when action could be taken concerning it.

It is unnecessary to determine just what authority this court has respecting amendments to claims timely proposed and entered in the Patent Office but not acted upon by the Patent Office tribunals.

[6] We feel that in the instant case where the amendments were not entered and never became a part of the case we are without jurisdiction to consider them. See In re Slate, 27 C. C. P. A. (Patents) 810, 108 F. (2d) 268, 44 USPQ 123; In re Taylerson, 31 C. C. P. A. (Patents) 1025, 142 F. (2d) 72, 61 USPQ 352; and In re Heritage, 33 C. C. P. A. (Patents) 783, 153 F. (2d) 111, 68 USPQ 190. The decision of the Board of Appeals is affirmed.

The decision referred to must have been made orally and counsel informally advised of it. It does not appear in the record before us.

658 O. G. 628; 39 CCPA 803; 194 F. (2d) 104; 92 USPQ 321

PATENTS

IN RE THIEBLOT (No. 5822)

1. COSTS-DIMINUTION OF RECORD

Cost of matter added to record by certiorari is taxed against appellant since court found it necessary to consider such matter.

United States Court of Customs and Patent Appeals,

[Affirmed.]

January 29, 1952

APPEAL from Patent Office, Serial No. D-140,209

Campbell, Brumbaugh, Free & Graves (Walter H. Free and Fisher & Christen of counsel) for appellant.

E. L. Reynolds (Clarence W. Moore of counsel) for Commissioner of Patents.

[Oral argument November 5, 1951, by Mr. Free and Mr. Moore]

Before GARRETT, Chief Judge, and JACKSON, O'CONNELL, JOHNSON, and WORLEY, Associate Judges

JACKSON, Judge, delivered the opinion of the court:

On July 11, 1947, appellant filed an application for a design patent, serial No. D-140,209 "For An Airplane."

The Primary Examiner rejected the single claim "The ornamental design for an AIRPLANE substantially as shown," as not being patentable over the following references:

Berkow, D-138,277, July 11, 1944.

Flying and Popular Aviation, May 1941, page 55, Figure "Fairchild M-62A." The Board of Appeals affirmed the decision of the Primary Examiner and from that decision this appeal was taken.

The drawings shown in the application disclose a low-wing singleengine monoplane. It is described by the examiner as having a fuselage in generally circular cross-section which tapers gradually into an ovoid shape at its end extending into the vertical rudder section. The nose, wing tips, and rudder elements of the plane are squared and a transparent canopy covers the cockpit. It is said that the airplane of appellant was developed by the United States Navy for training purposes and is known as "XNQ." It is manufactured by the Fairchild Engine and Airplane Corporation of Hagerstown, Md., which is the residence of appellant.

The publication reference identifies the "Fairchild M-62A" airplane as a product of the same company which made appellant's plane. The reference plane, a view of which is depicted in the printed record, is a low-wing single-engine monoplane, apparently designed for two

occupants in fore and aft position. There seems to be no canopy on the plane but there appears to be a windshield in front of each of the two cockpits. The design patent of Berkow shows a combination aircraft canopy and windshield.

The examiner held that to place the canopy of the Berkow patent on the Fairchild plan of the reference would result in substantially the same appearance as that claimed in the application. He noted that the Berkow canopy is of a removable type and it would not require the exercise of invention to put such canopy on the Fairchild plane.

The Board of Appeals in its decision observed that there is substantial similarity between the appearance of the canopy shown in the application and that of the Berkow reference, both disclosing three windows in the front of the canopy and a large transparent cover extending to the rear and that because of its removability the Berkow canopy may be applicable to any airplane.

Both the tribunals below noted that the differences between the reference plane and the involved structure comprise in the latter, squared wing tips and the squared tip of the vertical and movable rudders, whereas in the reference plane those elements possess curved edges. They concluded that as far as design is concerned no invention is involved in changing the curved edges to the more nearly squared edges.

Counsel for appellant, in their brief on appeal, contend that the single view of the Fairchild M-62A plane, as shown in the printed record, is inadequate to show the whole design and to justify the conclusion of the board that the plane of appellant and the reference plane look alike. They argue that the prior art reference should be as informative as the claimed designs are required by law to be in order that the novelty of the claimed design can be readily determined without conjecture as to the nature of the reference.

Subsequent to the filing of the brief for appellant in this court, the Solicitor of the United States Patent Office filed a motion to correct diminution of the record and prayed for a writ of certiorari covering appellant's letter to the Patent Office of February 9, 1949, and the attachments thereto, together with page 5 of appellant's brief before the Board of Appeals filed on October 28, 1949. This court denied the motion with privilege to renew the same at the hearing on appeal. The motion was renewed at the hearing and granted by the court with costs to be taxed on the decision.

It appears from the material added to the record that prior to the final rejection by the examiner counsel for appellant presented a carefully written description of the plane shown in the publication reference together with several clear drawings thereof. Therefore,

an accurate picture of that plane was before the examiner who stated in his final rejection that the detailed showing and the prints in connection with applicant's argument had been carefully considered.

Page 5 of appellant's brief before the Board of Appeals directed the attention of the board to the drawings of the Fairchild M-62A plane which had been brought to the examiner's attention and which was stated to be more revealing than the picture of the same plane shown in the publication reference.

The brief here on appeal for appellant makes no mention of the detailed description of the Fairchild M-62A drawings that were before both of the lower tribunals. It was stated that the photograph, as disclosed from the printed record, does not show the whole design of such plane and that the board could not have reached the conclusion it did without inferring something additional to what is shown in the reproduction of the photograph in the printed record. On the whole record which is before us, it is obvious that neither the Primary Examiner nor the Board of Appeals arrived at their conclusions by inference or conjecture. That is clearly shown by the language of the tribunals below, as may be observed from what has been set forth herein.

It is not disputed that the formations with respect to the shaped ends are conventional. It appears to us from a careful examination of the drawings of the M-62A plane which were before the lower tribunals and of which the photograph is a rather indistinct representation, that there is a strong similarity in appearance between that plane and the one shown in the involved application. It is also obvious that the transparent removable canopy of the Berkow reference is very similar to that of appellant.

We are of opinion that there was no error in rejecting the involved claim.

[1] For the reason that we have found it necessary to consider the matter which was added to the record by certiorari, the cost of such addition is taxed against appellant.

For the reasons herein set out, the decision of the Board of Appeals is affirmed.

660 O. G. 213; 39 CCPA 805; 194 F. (2d) 126; 92 USPQ 334

IN RE BLUE LAKE PRODUCERS COOPERATIVE, ETC. (No. 5847)

TRADE MARKS

1. REGISTRATION-IN GENERAL

Supplemental Register under 1946 Act is continuation of register under 1920 Act; Principal Register under 1946 Act is continuation of register under 1905 Act.

2. REGISTRATION-IN GENERAL REGISTRATION-ACT OF 1920

Purpose of section 1 (b) of 1920 Act was to widen eligibility of marks for American and foreign users thereof by authorizing registration of wholly descriptive and merely geographical terms and enabling marks to be registered at home and abroad; 1946 Act provides for continuation of that purpose. 3. MARKS AND NAMES SUBJECT TO OWNERSHIP GEOGRAPHICAL

There can be no monopoly or exclusive use of geographically descriptive or misdescriptive word.

4. MARKS AND NAMES SUBJECT TO OWNERSHIP DESCRIPTIVE-IN GENERAL Descriptive words cannot, except as provided by Supplemental Register, perform essential trade mark function of denoting origin.

5. IDENTITY AND SIMILARITY-HOW DETERMINED IN GENERAL Descriptive term cannot serve as dominant part of mark.

6. IDENTITY AND SIMILARITY-HOW DETERMINED IN GENERAL

Only obligation resting upon applicant seeking registration on Supplemental Register is to identify its product less it cause confusion in trade and be mistaken for product of owner of cited descriptive mark.

7. IDENTITY AND SIMILARITY-HOW DETERMINED DISSECTING MARKS

Mark must be considered in its entirety.

8. IDENTITY AND SIMILARITY-WORDS

"Oregon's Finest" is not confusingly similar to "Oregon Fruit Products."

United States Court of Customs and Patent Appeals, January 29, 1952 APPEAL from Patent Office, Serial No. 499,199

[Reversed.]

Kimmel & Crowell, George P. Kimmel, and A. Harry Crowell for appellant. E. L. Reynolds (H. 8. Miller of counsel) for Commissioner of Patents.

[Oral argument January 7, 1952, by Mr. Crowell and Mr. Miller]

Before GARRETT, Chief Judge, and JACKSON, O'CONNELL, JOHNSON, and WORLEY, Associate Judges

O'CONNELL, Judge, delivered the opinion of the court:

This is an appeal taken pursuant to the provisions of the Act of July 5, 1946 from the decision of the Examiner-In-Chief of the Board of Appeals of the United States Patent Office who, substituting for the Commissioner of Patents by the delegation of his duties respecting trade-mark appeals and the determination thereof,1 affirmed the

1 During the vacancy then pending in the office of the Assistant Commissioner of Patents, the hearings and determination of appeals in the United States Patent Office in trade-mark cases were delegated to the members of the Board of Appeals by an order of the Secretary of Commerce, published September 28, 1950, 15 Federal Register 6554, and October 17, 1950, 639 O. G. 643, under the provisions of Reorganization Plan No. 5 of 1950, 15 Federal Register 3174.